Compulife Software Inc. v. CompuOffice Software Inc.
T-1398-97
Wetston J.
17/12/97
7 pp.
Application for stay under Federal Court Act, s. 50 of application by Compulife for expungement of registered trademarks "CompuOffice" and "Across the Board"-CompuOffice's use of "CompuOffice" mark also subject of action in Federal Court for infringement, passing-off, depreciation of goodwill-CompuOffice filing statement of defence, counterclaim denying infringement, alleging infringement of "Across the Board" mark by Compulife-Compulife filing reply, defence to counterclaim, alleging "Across the Board" mark invalid-Whether Compulife's application for expungement under Trade-marks Act, s. 57 should be stayed pending existing action for infringement under s. 55, concerning use of same marks at issue in expungement proceeding-CompuOffice submitting infringement action wider in scope than expungement proceeding so as to completely address issue of validity of registration of marks in question-Compulife arguing stay should not be granted since applicant not establishing continuation of s. 57 proceeding would prejudice or cause injustice to defendant; or that stay would not prejudice plaintiff-Submitted Court should exercise its discretion to stay sparingly, and only where risk of imminent adjudication in two different forums-This Court not previously considering whether to grant stay proceedings where both infringement action and expungement application in Federal Court-However, stay of expungement proceeding in Federal Court not granted, notwithstanding infringement proceeding, based on identical marks, and also containing claim of invalidity, underway in provincial superior court: Association of Parents Support Groups in Ontario (Using Toughlove) Inc. v. York et al. (1987), 14 C.P.R. (3d) 263 (F.C.T.D.)-Stay of proceedings should not be granted unless (1) continuation of action causing prejudice or injustice, not merely inconvenience or additional expense to defendant; and (2) stay would not be unjust to plaintiff-Onus on party requesting stay to prove conditions exist: Discreet Logic Inc. v. Canada (Registrar of Copyrights) (1993), 51 CP.R. (3d) 191 (F.C.T.D.)-Court will exercise discretion to grant stay under Federal Court Act, s. 50(1) only in clearest of cases-Court reluctant to interfere with any right of access, unless risk of imminent adjudication in two different forums: Canadian Olympic Association v. Olympic Life Publishing Ltd. (1986), 8 C.P.R. (3d) 405 (F.C.T.D.)-In enacting s. 57 Parliament intending to provide separate right of access to Court, to dispute registration of trade-marks under Act-To grant stay of such proceedings limiting access to Court provided by statute-To justify stay, party seeking stay must demonstrate in interest of justice stay should be granted-Current approach suggesting stay should be granted to avoid risk of conflicting adjudications, not overlapping proceedings-Application dismissed-Federal Court Act, R.S.C., 1985, c. F-7, s. 50-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 55, 57.