Greenline Resins Limited (Plaintiff)
v.
American Can Company and Skelly Oil Compa
ny (Defendants)
Trial Division, Heald J.—Ottawa, November
28, 1972.
Trade marks—Practice—Action for infringement brought
subsequent to institution of expungement proceedings—
Motion to stay infringement action pending disposition of
expungement proceedings—Discretion of Court—Motion
dismissed—Federal Court Rule 324—Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 18, 19 and 20.
Plaintiff sued defendants for infringement of its regis
tered trade mark. Defendants, who had some months earlier
commenced an action for expungement of plaintiff's trade
mark but had delayed bringing it to trial, applied for a stay
of proceedings in the infringement action.
Held, the motion should be dismissed in the exercise of
the Court's discretion. Expungement proceedings are
intended to be summary.
Weight Watchers International Inc. v. Weight Watchers
of Ontario Ltd. (1972) 5 C.P.R. (2nd) 122, referred to.
MOTION.
Roger T. Hughes for plaintiff.
W. R. Meredith, Q.C. for defendants.
HEALD J.—This is an application by notice of
motion, on behalf of the defendants herein, for
an order that all proceedings in this action be
stayed until the completion of other proceed
ings before this Court, namely the proceedings
identified by Court No. T-3464-71, being
expungement proceedings commenced by these
defendants against this plaintiff to expunge the
registration of the trade mark "Chemplex" No.
176,238, alleged by this plaintiff in this action
to be infringed by these defendants. This
motion is being dealt with under Rule 324 with
out personal appearances pursuant to an order
of the Associate Chief Justice. Both parties
have filed detailed written submissions pursuant
to Rule 324.
Action No. T-3464-71 in this Court was com
menced by these defendants by an originating
notice of motion dated November 8, 1971.
Service of a certified copy of the originating
notice of motion on this plaintiff was also
effected on November 8, 1971. The Court file
does not indicate that anything further trans
pired until July 17, 1972 at which time an
amended originating notice of motion was filed
in the Court Registry. This amended pleading
was served on this plaintiff's solicitor on July
26, 1972 and proof of service thereof was filed
in the Registry on July 31, 1972. In September
of 1972, plaintiff launched a motion for security
for costs and on September 18, 1972, my broth
er Kerr J. ordered security in the sum of $1,000
and stayed all proceedings in the action until the
security was filed. Said security was received
by the Court Registry on October 23, 1972.
Subject action has been brought by the plain
tiff alleging that it is the registered owner of the
trade mark "Chemplex" under the Trade Marks
Act. Plaintiff alleges that, under section 19 of
said Act, it has the exclusive use of that trade
mark in Canada unless it is shown to be invalid.
The plaintiff's submission is that this action
against the defendants is not only an action for
an infringement of its registered mark but is
also an action under section 7(b) of the Trade
Marks Act, that is, an action based on its
common law rights to prevent confusion.
The prayer for relief in subject action asks
for an injunction restraining the defendants
from:
(a) infringing the plaintiff's registered trade
mark "Chemplex";
(b) using the trade mark "Chemplex" or any
other designation confusing therewith in asso
ciation with the sale or distribution in Canada
of polyethylene resins or similar products;
(c) directing public attention to its wares and
business in such a way as to cause or be
likely to cause confusion in Canada between
its wares and business and the wares and
business of the plaintiff;
and further asks for damages or an accounting
of profits as the plaintiff may elect.
In the case of Weight Watchers International
Inc. v. Weight Watchers of Ontario Ltd. (1972)
5 C.P.R. (2nd) 122, and more particularly at
pages 129 and 130 thereof, I reviewed the prin
ciples which are to govern the judicial discre
tion to be exercised in a case of this kind.
The first circumstance against granting the
defendants' motion in this case relates to the
nature of the two proceedings in this Court and
the way they have been conducted thus far.
These defendants commenced the expunge -
ment proceedings under section 57 of the Trade
Marks Act more than â year ago. It seems to me
that there has been considerable delay in getting
said proceedings ready for trial and this delay
has all been by the applicants, the defendants in
this action. Nothing happened from November,
1971 to July, 1972 when the applicants amend
ed their originating notice of motion. This plain
tiff then applied for security for costs which
was ordered on September 18, 1972 but not put
up by these defendants until October 23, 1972.
Expungement proceedings under section 57
of the Act are intended to be summary as
appears clear from a reading of sections 57 to
59 inclusive of the Act and Federal Court Rule
704. (See also: Broderick & Bascom Rope v.
Registrar of Trade Marks 62 C.P.R. 268; Home
Juice v. Orange Maison Ltée [1968] 2 Ex.C.R.
535; Eli Lilly & Co. v. Martineau [1954]
Ex.C.R. 681.) Rule 704(3) requires the appli
cant to file its affidavits in support of the
application within fifteen days after the origi
nating notice was filed.
As stated above, these expungement proceed
ings were begun in November of 1971 and yet
applicant's affidavits were not filed until July
31, 1972.
Counsel for the defendants submitted that
"summary" merely means that some of the
formality or steps of a full litigation are lacking
and that "summary" does not relate in any way
to time. With deference, I cannot accept this
very narrow definition of "summary". I prefer
the definition of "summary" as it is found in
The Shorter Oxford English Dictionary-3rd
ed., p. 2076 as follows:
Applied to the proceedings in a court of law carried out
rapidly by the omission of certain formalities required by
the common law. (Italics mine).
Thus, summary proceedings are intended to
be less formal and more expeditious than in
normal litigation before the courts. A perusal of
Rule 704 confirms this view. The time limits
specified therein are fairly short. Provision is
made for the evidence to be in the form of
affidavits. Cross-examination on the affidavits
filed is permitted only with the leave of the
Court. Everything about this procedure indi
cates the intention to provide a less formal and
a quicker procedure. The Rules of Court afford
ed to these defendants the machinery whereby
they could have had the validity of plaintiff's
registration decided before this. That being the
case, I do not think they should be allowed to
use their expungement proceedings to stay
plaintiff's infringement action.
The second circumstance against granting a
stay in this action is the stage of both proceed
ings. Because of the delay of these defendants
in moving their expungement proceedings for
ward, the reply of this plaintiff in said proceed
ings as stipulated in Rule 704 is not due until
about the end of November, 1972. Thus, the
plaintiff has not yet filed said reply and the
issues in said expungement proceedings are not
defined.
So far as subject action is concerned, the
statement of claim was filed on April 4, 1972. It
was necessary to obtain an order of the Court
for service on the defendants ex juris which
order was obtained on June 26, 1972. Appear
ance on behalf of the defendants was filed in
the Court on July 28, 1972. To date, no defence
has been filed on behalf of the defendants.
Thus, the situation is similar to that in the
Weight Watchers case referred to above, where
I refused to grant a stay because of the early
stage of the proceedings and because the issues
were not clearly defined. I would only be justi
fied in granting a stay in the clearest of cases
and this, in my view, is not such a case.
Counsel for the defendants filed an affidavit
by John C. Singlehurst to which was attached a
draft statement of defence and in said affidavit,
the deponent swore:
As presently advised the said statement of defense repre
sents the defendants' position in the within proceedings, and
in the event that this Honourable Court should not see fit to
stay the within proceedings, the defendant intends to file
herein a Statement of Defense in the identical or closely
similar form.
However, the fact remains that no defence has
been filed. After a defence is filed, the plaintiff
would be entitled to file a reply, and only then,
in a normal case, would the pleadings be closed.
Apart from any other consideration, it seems to
me that this application is premature.
Counsel for the plaintiff also submitted that
the issues in the two actions are not the same
and relied on my decision in the Weight Watch
ers case (supra) and the Supreme Court case of
General Foods Ltd. v. Struthers Scientific and
International Corp. (1971) 4 C.P.R. (2nd) 97.
Because defences have not been filed in
either proceeding, the issues have not been
clearly defined in either proceeding and it is
therefore not possible, nor indeed necessary on
this application to decide whether or not the
issues and questions in dispute are the same in
both proceedings.
I have thus concluded that these defendants
have failed to discharge the onus upon them in
an application of this nature. The motion is
therefore dismissed with costs to the plaintiff,
in any event of the cause.
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