Simmonds Capital Ltd. v. Eurocom International Ltd.
T-2151-97
Hargrave P.
15/1/98
12 pp.
Motion to stay action for trade mark, copyright infringement, in favour of arbitration-Plaintiffs suppliers of hand-held two-way radio units sold in distinctive copyright packaging under trade mark "Midland"-Granted right to market radio units in western Canada to S.C.L. Distributors (Western) Ltd.-Eurocom created to export two-way radios into eastern Europe-Licence agreement requiring Eurocom to pay licence fee, commission, buy radios for eastern European market from Midland or Midland's manufacturer-Licence agreement containing arbitration provision covering disputes, controversy or claim arising out of or relating to agreement or breach thereof-Defendants alleging breach of licence agreement relating to supply of radio units, market exclusivity-Plaintiffs alleging defendants producing counterfeit radio units, failure to pay licence fee-Motion dismissed-Litigation, arbitration two separate proceedings-Only one defendant party to arbitration-Issues in arbitration, litigation overlapping at only one point, being peripheral claim by Midland against Eurocom for breach of licence agreement-Portions of statement of claim relying on Copyright Act, Trade-marks Act outside licence agreement-Only if party relying on existence of licence agreement to create claim, ought it to be arbitrated-Midland not requiring existence of licence agreement to create cause of action-Trade mark, copyright, counterfeit product aspects beyond strict jurisdiction of arbitrators-Resulting state of affairs, i.e. arbitration in Missouri and litigation in Federal Court, unfortunate, costly, but not duplicate proceedings-While similar factual aspects, nothing arbitrators may properly find or determine will result in inconsistent outcome, or have any real bearing on present action, or impinge on present action, as real substance of Federal Court proceeding involving counterfeit goods, Trade-marks Act, Copyright Act violations, not contractual breaches of licensing agreement-Stay rejected in order that all parties might be referred to arbitration because trade mark, copyright aspects of claim beyond scope of arbitration; Court not having authority to order all parties to arbitrate unless all consent, which plaintiffs do not-Plaintiffs, in absence of applicable contractual bar to litigation, entitled to select forum-No abuse, no call for stay where separate causes of action, one group of which clearly falling to be arbitrated in Missouri and another not falling within submissions to arbitration-Merely because some of parties, evidence common to both proceedings not demanding wholesale stay of action-While licence agreement mentioned in litigation, underlying whole arbitration, Federal Court action primarily one for trade mark, copyright infringement, consequent injunctive relief-Further, may be similar evidence in both action, arbitration, but with evidence being tendered in respect of different causes of action, no reason to stay Federal Court proceeding.