Date: 20010424
Docket: T-393-98
Neutral Citation: 2001 FCT 378
MONTRÉAL, QUEBEC, THE 24th DAY OF APRIL, 2001
BEFORE: RICHARD MORNEAU, PROTHONOTARY
Between:
A. LASSONDE INC.
Plaintiff
(cross-defendant)
AND
SUN PAC FOODS LIMITED
Defendant
(cross-plaintiff)
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] The Court has before it a motion by the defendant asking it to resolve in its favour certain objections made by counsel for the plaintiff at the examinations of the plaintiff's representative.
[2] The background of the dispute between the parties and the state of the law applicable to the questions raised in an examination for discovery are well known to everyone, since this Court has had to make decisions similar to this in the past in the case at bar. (See this Court's decisions on June 19, 1998 and February 22, 2000.)
[3] The Court must now turn to deciding the questions using the classification or sub-classification used by the parties. Unless the Court makes special comments on a question, its disallowing of any question is for the reasons stated by the plaintiff.
Class 1
[4] No question in this class has to be answered.
Class 2
[5] In view of the various points raised by the plaintiff in paras. 10 to 14 of its amended statement of claim ("the statement of claim"), and as the option for profits does not completely eliminate the relevance of the following questions, the plaintiff will have to answer questions 4, 5, 7, 8, 9 and 10.
[6] Question 6 will also have to be answered since the reasons put forward by the plaintiff are not a bar to a court of law ordering production of relevant documents. This also means that questions 15, 16, 17, 19 and 23 in class 4 and questions 79, 80, 81, 83 and 99 in class 7 will have to be answered.
Class 3
[7] Question 11 will have to be answered since even if it is assumed that the Court is ultimately seeking the consumer's opinion, Mr. Gattuso's viewpoint may nevertheless be of some relevance. This also means that questions 26 in class 5, 60 in class 6 and questions 84 and 90 in class 7 will have to be answered.
[8] Question 12 will not have to be answered.
Class 4
[9] Since it transpires that the plaintiff benefits from registration under s. 12(2) of the Trade-Marks Act, it appears to the Court that questions regarding the evolution or development of the plaintiff's mark are relevant. Consequently, question 21 will have to be answered. However, questions 13 and 20, question 27 in class 5 and questions 49, 57 and 58 in class 6 will not have to be answered because they will occasion undue hardship in terms of the value of the information sought.
[10] Question 14 will have to be answered. Question 18 and question 82 in class 7 will not have to be answered. Questions 22 and 25 will not have to be answered; the same is true for question 89 in class 7.
[11] On question 24, it appears to the Court that the information sought by this question is well known to Sun Pac and so this question will not have to be answered.
Class 5
[12] Question 28 will not have to be answered.
[13] Questions 29, 30, 31 and 32 will have to be answered since the composition of the plaintiff's products appears to be relevant inter alia to the quality of those products and the descriptiveness of the mark FRUITÉ. This means that questions 53, 54, 55, 56, 61, 63 and 64 in class 6 will have to be answered as well as questions 76, 77, 78, 91, 93 and 94 in class 7.
[14] Question 23 will not have to be answered since it appears to the Court that this is essentially a point of law which is at the root of the dispute between the parties. Similarly, question 65 in class 6 will not have to be answered.
[15] Like question 2 in class 1, question 34 will not have to be answered.
[16] Additionally, in view of the confidentiality order that is now in the record, it appears to the Court that it should order production of the various licence or settlement agreements which may exist between the plaintiff and third parties in respect of the mark FRUITÉ or any similar mark. Such agreements are relevant to the dispute between the parties. Consequently, questions 36, 41, 42, 43 and 44 will have to be answered. This implies that questions 95 and 101 to 104 in class 7 will have to be answered. Incidentally, the agreement between the plaintiff and Kraft will have to be filed in its entirety.
[17] Questions 37, 38, 39, 40, 45, 46, 47 and 48, question 73 in class 6 and questions 97, 98, 100, 106 and 107 in class 7 will not have to be answered.
Class 6
[18] Questions 50, 51, 52, 59 and 62 and questions 88 and 92 in class 7 will not have to be answered.
[19] Similarly, questions 66 to 72 will not have to be answered.
Class 7
[20] On questions 85, 86 and 87, the parties are prepared to abide by the undertaking contained in paragraph 111 of the plaintiff's written submissions. However, the Court extends that undertaking also to the market for food services.
[21] Question 96 will not have to be answered.
Other matters
[22] Within 10 days of the instant order, Sun Pac will be required to comply with point 4 of this Court's order dated October 11, 2000.
[23] Within 40 days of the instant order, the plaintiff will be required to file the undertakings which it has given and which are listed in Appendix A at pp. 8 et seq. of Sun Pac's motion record filed on November 30, 2000. Any undertaking listed therein which the plaintiff considers is not really an undertaking should be the subject of a motion by this party to be exempt from filing. Such a motion will have to be served and filed within the same 40-day deadline.
[24] Any motion by the defendant to strike paras. 23 and 24 of the plaintiff's amended statement of claim filed on February 28, 2000 will have to be served and filed within 40 days of the instant order.
[25] Any remaining matters, including continuing the examination of the plaintiff's representative to obtain answers to the questions ordered herein and any matter arising from the answers to be given, will be determined by schedule when decision is rendered on the motion contemplated in para. [24] above.
[26] Since the outcome is divided on the instant motion, no costs will be awarded thereon.
Richard Morneau
Prothonotary
Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT No.: T-393-98
STYLE OF CAUSE: A. LASSONDE INC.
Plaintiff
(cross-defendant)
AND
SUN PAC FOODS LIMITED
Defendant
(cross-plaintiff)
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: February 22, 2001
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER: April 24, 2001
APPEARANCES:
Philippe Leroux for the plaintiff (cross-defendant)
Keri Johnston for the defendant (cross-plaintiff)
Solomon R. Avisar
SOLICITORS OF RECORD:
Brouillette, Charpentier, Fortin for the plaintiff (cross-defendant)
Montréal, Quebec
Johnston, Avisar for the defendant (cross-plaintiff)
Toronto, Ontario
Dimock, Stratton, Clarizio for the defendant (cross-plaintiff)
Toronto, Ontario