BETWEEN:
et
Heard at Montréal, Quebec, on January 11, 2007.
Judgment delivered at Ottawa, Ontario, on January 16, 2007.
REASONS FOR JUDGMENT BY: PELLETIER J.A.
CONCURRED IN BY: DÉCARY J.A.
NOËL J.A.
Docket: A-139-06
Citation: 2007 FCA 46
CORAM: DÉCARY J.A.
NOËL J.A.
PELLETIER J.A.
BETWEEN:
OSMOSE PENTOX INC.
Appellant
et
SOCIÉTÉ LAURENTIDE INC.
Intimée
REASONS FOR JUDGMENT
[1] As the Memoranda of Fact and Law were prepared in English, these reasons for judgment have been prepared in English as well.
[2] This is an appeal from the decision of de Montigny J. (the motions judge) sitting on appeal from an order of Prothonotary Morneau dated December 14, 2005. In a decision reported at 2006 FC 386, the motions judge affirmed the prothonotary’s order dismissing the appellant’s motion for a confidentiality order with respect to the Motion Record which it filed in support of its motion for an Anton Piller order and “another remedy”. The nature of that remedy remains a mystery to the respondent, but it was the subject of a second ex parte motion filed October 11, 2005, which was also dismissed by the prothonotary at the same time as he disposed of the motion for a confidentiality order. The appellant alleges that the prothonotary and the motions judge erred in concluding that the subject matter of the October 11, 2005 motion had been dealt with when the motion for the Anton Piller order was dismissed. Finally, the appellant appeals from the award of costs against it in the amount of $3,500.
[3] The matter has a long history in which allegations of inadequate disclosure and production of documents figure prominently, particularly in relation to documents relevant to the issue of the respondent’s profits from the alleged infringement of the appellant’s trade-mark.
[4] The appellant made an ex parte motion for an Anton Piller order. While expressing the opinion that the motion was premature, the judge who heard the motion, Lemieux J. dismissed it in an order dated September 9, 2005. The appellant therefore takes the position that it is entitled to a confidentiality order depriving the respondent access to its motion record since it may be entitled to rely on that motion record at a later time to make a second motion for an Anton Piller order if, in its view, the respondent does not comply with its disclosure obligations. Further, the appellant argues that the disclosure of its motion record will disclose to the respondent evidence and perhaps documents of which it is unaware, thereby giving the respondent unfair disclosure of the appellant’s evidence.
[5] The appellant also appeals from the prothonotary’s finding, affirmed by the motions judge, that Lemieux J. dismissed the appellant’s motion for the other remedy which it sought. The appellant says that Lemieux J. has not decided that issue and that the prothonotary and the motions judge erred in failing to hear and decide its October 11, 2005 motion for essentially the same relief.
[6] The appellant’s motion for a confidentiality order is based upon a misconception of the nature of an Anton Piller order and of the role of confidentiality orders generally, and more specifically in the context of Anton Piller orders.
[7] The confidentiality associated with an Anton Piller order relates to the execution of the order and not to the grounds upon which the order is obtained. The motion seeking the Anton Piller is made ex parte because notice of the order would provide the opportunity to destroy the evidence which the order seeks to protect. Once the order is executed, the party against whom it has been executed is entitled to see the applicant’s motion record in order to contest the issuance of the order. See Rule 399(1) of the Federal Courts Rules. Had the appellant obtained the order it sought, it would have faced the same problem it now faces, with the same result. The respondent would be entitled to see the appellant’s motion record.
[8] This is not changed by the fact that the motion for the Anton Piller order was dismissed. The dismissal of the motion means that there is no further need to protect the right to execute the order without notice. The motion record is part of the public record. In cases involving sensitive proprietary information, as often occurs in pharmaceutical cases, the Court will limit a party’s access to another party’s information, but will allow a party’s advisors access to that information, on the condition that appropriate assurances are given. See Rules 151 and 152. That is not the case here. While it may be that the lifting the existing confidentiality order will allow the respondent access to information which the appellant would prefer to avoid disclosing, that information would have been subject to disclosure in any event if its motion had been successful.
[9] As a result, there is no justification for ordering that the motion record filed by the appellant in support of its application for an Anton Piller order be the subject of a confidentiality order which would deny the respondent, as well as the public, access to the appellant’s motion record. The prothonotary, and the motions judge, were correct to dismiss the appellant’s motion for a confidentiality order.
[10] As for the appellant’s claim for a further remedy, the prothonotary and the motions judge held that it had been implicitly dismissed by Lemieux J. when he dismissed the appellant’s motion for an Anton Piller order, which also contained a claim for the additional remedy. Counsel for the appellant advised the Court that certain representations were made at the time the file was put before a judge, which lead him to believe that the matter of the additional remedy was to be dealt with separately. The silence of Lemieux J.’s reasons on this issue lends credence to counsel’s assertion. For that reason, and in light of the confusion which appears to have developed on this issue, I would allow the appeal in part so as to allow the appellants to re-submit their motion for the additional remedy but only upon notice to the respondent.
[11] Finally, there is the matter of costs. Costs, while discretionary, must nonetheless be awarded according to settled principles. In the particular circumstances of this case, the motions judge saw no reason to interfere with the prothonotary’s exercise of his discretion. I can see no reason to interfere with the motion judge’s disposition of this issue.
[12] For those reasons, the appeal should be allowed in part to allow the appellant to resubmit their motion for the additional remedy upon notice to the respondent. Having regard to the fact that the respondents have achieved substantial success in the appeal, they should be awarded their costs but only on a party and party basis, to be assessed at the midpoint of Column III of Tariff B of the Federal Courts Rules.
“I agree.
Robert Décary J.A.”
“I agree.
Marc Noël J.A."
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-139-06
STYLE OF CAUSE: OSMOSE PENTOX INC. et SOCIÉTÉ LAURENTIDE INC.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: January 11, 2007
REASONS FOR JUDGMENT BY: Pelletier J.A.
Noël J.A.
APPEARANCES:
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Josée Bonneau |
FOR THE APPELLANT
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Alain Chevrier |
FOR THE RESPONDENT
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SOLICITORS OF RECORD:
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10122 boul. St-Laurent, #200 Montréal, Quebec H3L 2N7 |
FOR THE APPELLANT
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Tour de la Banque, 43e étage 800 Square Victoria, C.P. 303 Montréal, Quebec |
FOR THE RESPONDENT
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