[1996] 2 F.C. 658
T-1181-95
Indian Manufacturing Limited and 951268 Ontario Limited (Plaintiffs)
v.
Kin Ming Lo, Phillip Bannon and Jane Doe and John Doe and Other Persons, Names Unknown, Who Offer for Sale, Sell, Import, Manufacture, Print, Distribute, Advertise, Promote, Ship, Store, Display, or Otherwise Deal in Unauthorized Merchandise Bearing the Trademark Indian Motorcycle or Indian Motocycle in Canada (Defendants)
Indexed as: Indian Manufacturing Ltd. v. Lo (T.D.)
Trial Division, Nadon J.—Ottawa, March 27 and April 1, 1996.
Injunctions — Application to stay order vacating Anton Piller order pending appeal — Anton Piller order in effect until June 3, 1996, unless set aside, renewed, varied by Court; permitting persons served therewith to move Court to vary or discharge order on 72 hours’ notice — Judge vacating order on own volition when plaintiffs seeking to convert interim injunction into interlocutory injunction — None of 60 persons served with order applying to set aside, vary order — Application allowed — Serious issue, irreparable harm to plaintiffs if stay not granted, balance of convenience favouring plaintiffs.
Practice — Judgments and orders — Stay of execution — Application to stay order vacating Anton Piller order pending appeal — Application allowed as serious issue, irreparable harm to plaintiffs if stay not granted, balance of convenience favouring plaintiffs — Suggesting Rules Committee consider whether motions to stay Trial Division order pending appeal should be presented to Court of Appeal.
Judges and Courts — T.D. Judge granting Anton Piller order — Second T.D. Judge vacating order upon application to convert interim to interlocutory injunction as counsel not living up to special responsibilities where rolling Anton Piller order granted — Application to third T.D. Judge to stay second Judge’s order — Rules Committee might consider whether motion to stay T.D. order pending appeal should be heard by F.C.A.
This was an application to stay an order vacating an Anton Piller order pending the outcome of an appeal. On June 5, 1995 the plaintiffs applied ex parte for, and were granted, an interim injunction and an Anton Piller order against the defendants. That order provided that it would have effect until June 3, 1996 unless it was set aside, renewed or varied by the Court. It also permitted those served therewith to move the Court on 72 hours’ notice to vary or discharge the order. Thereafter the plaintiffs served the order on 60 persons, and on 10 occasions the Court reviewed the order and converted the interim injunctions into interlocutory orders in respect of the persons served with the order. On the last application Reed J. dismissed the application and set aside the Anton Piller order.
The issue was whether it had been open to Reed J. to set aside the Anton Piller order on her own volition upon an application to convert the interim injunction into an interlocutory injunction.
Held, the application should be allowed in part.
There was a serious issue herein. The terms of the order provided that it was effective unless set aside, reviewed or varied by the Court, and it clearly permitted those served therewith to apply to have it set aside or varied. No such application had been made. The plaintiffs would suffer irreparable harm if the stay was not granted, and the balance of convenience favoured the plaintiffs. As the Court did not have the benefit of argument against the application, counsel for the plaintiffs was expected to pursue the appeal diligently. Any delay would not be looked upon favourably by the Court.
It would appear that motions to stay an order of a judge of the Trial Division, pending an appeal, should be presented before the Court of Appeal. The Rules Committee might wish to entertain this suggestion.
STATUTES AND REGULATIONS JUDICIALLY CONSIDERED
Trade-marks Act, R.S.C., 1985, c. T-13.
APPLICATION to stay an order vacating an Anton Piller order pending the outcome of an appeal. Application allowed in part.
COUNSEL:
Joseph S. Garten for plaintiffs.
No one appearing for defendants.
SOLICITORS:
Joseph S. Garten, Toronto, for plaintiffs.
No solicitor of record for defendants.
Nadon J.: The plaintiffs seek an order staying the order of Reed J., rendered on March 25, 1996 [[1996] 2 F.C. 647 pending the outcome of an appeal which the plaintiffs intend to launch.
Briefly put, the relevant facts are the following. On June 5, 1995, the plaintiffs filed a statement of claim against a number of named defendants and also against Jane Doe, John Doe and other persons, names unknown. By their statement of claim, the plaintiff, 951268 Ontario Limited, alleges ownership of canadian trade-mark registration number 384,615 (trade-mark 615), by assignment effective July 26, 1991. The other plaintiff, Indian Manufacturing Limited, alleges that it is the licensee, with the exclusive right to sub-licence, of trade-mark 615, by agreement effective January 1, 1993.
The plaintiffs further allege by the statement of claim that the original owner of trade-mark 615, for the trade-mark “Indian Motorcycle”, registered under the provisions of the Trade-marks Act, R.S.C., 1985, c. T-13 on May 17, 1991, was Mark Cooper.
The plaintiffs further allege that the named defendants have, without the consent of the plaintiffs, offered for sale, sold, imported, manufactured, printed, distributed, advertised, promoted, shipped, stored, displayed or otherwise dealt in unauthorized merchandise bearing the trade-mark “Indian Motorcycle”.
In addition, the plaintiffs further allege that “there are many others in Canada whose identities are unknown to the Plaintiffs” who were, are, or will be engaged in conduct similar to that of the named defendants.
In the conclusion to their statement of claim, the plaintiffs seek, inter alia, a declaration that plaintiff 951268 Ontario Limited is the owner of trade-mark 615 and that the registration is valid and subsisting and has been infringed by the defendants. The plaintiffs further seek a permanent injunction restraining the defendants, named and unknown, from pursuing the conduct referred to hereinabove.
On June 5, 1995 the plaintiffs applied ex parte to obtain an order for an interim injunction and an order in the nature of an Anton Piller injunction against the defendants. With their ex parte application, the plaintiffs filed an undertaking to the effect that they would be bound by any order of this Court with regard to damages arising from the execution of the order which they sought, should the order be set aside at a later date.
On June 5, 1995 Jerome A.C.J. granted the order sought by the plaintiffs. Paragraphs 4, 12(a) and (b), 14 and 15 of his order read as follows:
4. The terms of this Order shall have effect until June 3, 1996, unless set aside, renewed or otherwise varied by Order of this Honourable Court.
12. At any time that this Order is enforced against any persons from whom merchandise, documentation, data or manufacturing equipment is seized:
a) The PERSONS ENFORCING THIS ORDER shall effect service of this Order, or the Statement of Claim or any Notice of Motion in this action by serving a certified copy or a photocopy of this Order or the Statement of Claim or any Notice Of Motion. If requested by them the persons so served shall be shown an original or certified copy of the original of this Order or the Statement of Claim herein or any Notice of Motion, as soon as practicable; and
b) The PERSONS ENFORCING THIS ORDER shall explain, if requested, the nature and effect of the Order in ordinary language and inform that person that he or she may apply to the Court for the return of any merchandise, documentation, data or manufacturing equipment seized, a review of this Order or an Order that the Plaintiffs post security.
14. The persons served with this Order may move the Court, at any sittings of the Court to:
(a) vary or discharge this Order; or
(b) require that security be posted;
on 72 hours notice to the Plaintiffs” counsel, together with service upon them of any supporting material to be relied upon in connection with such motion and, in any event, all aspects of this matter shall be subject to review of this Court on Monday, June 3, 1996, in Toronto at 330 University Avenue, 9th Floor, 10:00 a.m. or soon thereafter as this matter may be heard.
15. The PERSONS ENFORCING THIS ORDER shall also serve upon each person so served a Notice of Motion to have this interim ex parte Order made interlocutory. This Notice of Motion may be returnable either by way of telephone conference at 250 University Avenue, Toronto, Ontario M5H 3E5, within approximately 10 days of the service of this Order and the said Notice of Motion or so soon thereafter as the motion may be heard or alternatively, at the Plaintiffs” discretion, in person, at the regular sittings of this Honourable Court in Toronto, within approximately 10 days of the service of this Order and the said Notice of Motion or soon thereafter as the motion may be heard.
Between June 5, 1995 and March 25, 1996 i.e. the date of Reed J.'s order, the plaintiffs, following service of the June 5, 1995 order upon approximately sixty persons, applied on 11 occasions to the Court to review the order of June 5, 1995, as required therein, and to convert the interim injunction order into an interlocutory order in respect of the persons served with the June 5, 1995 order. Orders dated June 21, 1995, July 25, 1995, September 9, 1995, October 16, 1995, October 30, 1995, November 28, 1995, December 11, 1995, January 15, 1996 and January 22, 1996 were rendered by judges of this Court allowing the plaintiffs” applications.
On September 28, 1995 Reed J., faced with one of these applications, refused to make the order requested by the plaintiffs i.e. to make the interim injunction interlocutory in respect of five persons served with the June 5, 1995 order. The March 25, 1996 order of Reed J., which the plaintiffs ask me to stay, was concerned with the plaintiffs” application to convert the interim injunction into an interlocutory injunction in respect of three persons served with the June 5, 1995 order. Reed J. dismissed the application and also set aside the order of June 5, 1995.
The plaintiffs, in requesting a stay of Reed J.—s order, submit that Reed J. erred in law in setting aside the June 5, 1995 order. Specifically, the plaintiffs argue that since the motion before Reed J. sought only, in effect, to convert the interim injunction into an interlocutory injunction, Reed J. could not, of her own volition, proceed to set aside the June 5, 1995 order. The plaintiffs submit that this could only be done upon an application made by one of the persons served with the June 5, 1995 order. In that respect, the plaintiffs refer to paragraph 14 of the June 5, 1995 order which expressly provides that any person served with the order may apply to the Court to vary or discharge the order, on 72 hours notice to plaintiffs” attorneys. Paragraph 14 of the June 5, 1995 order further provides that “all aspects of this matter shall be subject to review of this Court on Monday, June 3, 1996”. The plaintiffs also refer to paragraph 15 of the June 5, 1995 order which provides that upon enforcement thereof against any person, service upon such person of a notice of motion, returnable within approximately 10 days of the service of the June 5, 1995 order, to have the interim ex parte injunction made interlocutory must be made.
Thus, the plaintiffs argue that the purpose of the motion, made returnable on February 19, 1996 at Toronto, was to convert the interim ex parte injunction into an interlocutory injunction against Anuva Dutta, The Key Place, and Maria Teresa Hadgett. As I have already indicated, Reed J. dismissed that motion, as she had dismissed, on September 28, 1995, a similar motion made by the plaintiffs. For clarity, I hereby reproduce, in part, the plaintiffs” notice of motion made returnable in Toronto on February 19, 1996. This notice is, in effect, very similar to the previous ten notices of motions filed by the plaintiffs.
NOTICE OF MOTION
TAKE NOTICE that the Plaintiffs will make a Motion to this Honourable Court, on Monday, the 19th day of February 1996 at 10:00 o'clock in the forenoon or so soon thereafter as counsel may be heard at the Federal Court, 330 University Avenue, 9th Floor, Toronto, Ontario
THE MOTION is for:
(a) A review of the Order of the Honourable Associate Chief Justice dated Monday, June 5, 1995, as required therein;
(b) the following parties, personally served, shall include (57) Anuva Dutta; (58) The Key Place; (59) Maria Teresa Hadgett;
(c) an Order that the interim ex parte Order of the Honourable Associate Chief Justice dated June 5, 1995, be made an interlocutory Order in respect of the Respondent personally served, their directors, officers, servants, agents, employees or distributors and all those under their control or any person having notice of this Order until further order of this Court in this action and that they be restrained from:
(i) using, offering for sale, selling, importing, manufacturing, printing, distributing, advertising, promoting, shipping, storing, displaying or otherwise dealing with wares in infringement of Canadian Trademark Registration Number 384,615;
(ii) using, offering for sale, selling, importing, manufacturing, printing, distributing, advertising, promoting, shipping, storing, displaying or otherwise dealing with wares in association with the trademark “Indian Motorcycle” or any other trademark confusing with the trademark “Indian Motorcycle”;
(iii) directing public attention to its wares or business in such a way as to cause confusion with the wares or business of the Plaintiffs;
(iv) passing-off its wares as the wares of the Plaintiffs; and
(v) making false and misleading statements to the public concerning the Respondent's alleged trademark rights and those of the Plaintiffs, for the purpose of promoting their own products and business and tending to discredit those of the Plaintiffs;
(d) an Order abridging the time for filing the Notice of Motion and of material in support of the Motion herein, outside the two (2) clear day period prescribed, if necessary;
(e) an order that an appointment of a special time and place for a sitting of this Honourable Court be set on an expedited basis to hear the Plaintiffs” Motion for an interlocutory injunction and setting a schedule expediting the proceedings to accomplish this, if necessary, and
(f) such further and other relief as to this Honourable Court may seem just.
By point (a) of their notice of motion, the plaintiffs seek a review of the June 5, 1995 order, “as required therein”. The plaintiffs” submission is that point (a) must be read in conjunction with paragraphs 14 and 15 of the June 5, 1995 order. In other words, the plaintiffs argue that they were seeking a review of the June 5, 1995 order in order to convert the interim injunction to an interlocutory injunction.
It appears to me that there is a very serious issue in regard to this matter since the terms of the June 5, 1995 order, by reason of paragraph 4 thereof, were made effective until June 3, 1996 unless set aside, reviewed or otherwise varied by order of this Court. The June 5, 1995 order clearly provides that the persons served with a copy thereof are at liberty to apply to the Court to have the order set aside or varied. Thus, any of the approximately sixty persons served with the order, could have applied to the Court to set aside the June 5, 1995 order or ask that the said order be varied. So far, none of these persons have applied to the Court. In fact, no party has yet filed a statement of defence to the plaintiffs” action.
The issue appears to be whether, in these circumstances, it was open to Reed J. to set aside the June 5, 1995 order. The plaintiffs submit that it was not so open and that they did not ask the learned Judge to set aside the June 5, 1995 order.
After careful consideration of the submissions made by the plaintiffs” counsel and the affidavits in support of this motion, I have come to the conclusion that there is a serious issue and that the plaintiffs would suffer irreparable harm if the stay was not granted. I am also of the view that the balance of inconvenience is in favour of the plaintiffs.
For these reasons, I will allow, in part, the plaintiffs” application. The order rendered on March 25, 1996 by Madam Justice Reed in so far as concerns paragraphs 3, 4, 5, 6, 7, 8, 9 and 10 thereof, shall be stayed pending the plaintiffs” appeal.
The plaintiffs will pursue their appeal in the most expeditive manner and in that respect, plaintiffs” counsel shall take all necessary steps to have his clients” appeal heard at the earliest possible time. I should point out that, in deciding upon the plaintiffs" application, I did not have the benefit of arguments against the application because there are, for the time being, no opponents to the plaintiffs. I therefore wish to make it clear that counsel for the plaintiffs is expected to prosecute his appeal diligently. Any delay, unless clearly outside counsel's control, will not be looked upon favourably by this Judge and, I trust, by other judges of this Court who might be called upon to hear further applications brought by the plaintiffs in order to enforce the June 5, 1995 order.
Lastly, it would appear to me that motions to stay an order of a judge of the Trial Division, pending an appeal, should be presented before the Court of Appeal. Perhaps, the Rules Committee might entertain this suggestion.