U.S. Natural Resources, Inc. (Appellant)
v.
Moore Dry Kiln Company of Canada Limited
(Respondent)
Court of Appeal, Jackett C.J., Thurlow J. and
Cameron D.J.—Ottawa, February 22, 1973.
Trade marks—Pleading—Infringement—Sufficiency of
allegations—Pleading legal bases for relief claimed—Motion
to strike out statement of claim—Particulars.
The owner of a registered trade mark "Moore" used in
association with forest products brought action against
defendant alleging (1) that in 1970 defendant commenced
using the word "Moore" either alone or with other words in
a competitive business, and (2) that the use of these words
(a) constituted a breach of its registered mark under sections
19 and 20 of the Trade Marks Act, (b) would depreciate
plaintiff's goodwill contrary to section 22, (c) caused confu
sion between plaintiff's and defendant's wares; and (d)
passed off defendant's wares for plaintiff's.
Held, affirming the Trial Division, a motion by defendant
to strike out the above allegations in the statement of claim
or the request for particulars, must be dismissed.
The allegations in (1) set out a good cause of action or at
least a fairly arguable cause of action.
Although the allegations in (2) were not allegations of fact
but of the legal bases for the relief claimed, such allegations
should not be reviewed on an application to strike out where
the material facts alleged constituted an arguable cause of
action, except in an extreme case.
Defendant was not entitled to particulars. Defendant must
know what business it carried on in Canada and what
products and equipment it sold and under what trade marks
it sold them.
APPEAL.
COUNSEL:
Ross Carson for appellant.
Daniel I. Lack and R. Graham McClenahan
for respondent.
SOLICITORS:
Foster, Carson & Co., Ottawa, for
appellant.
Gowling and Henderson, Ottawa, for
respondent.
JACKETT C.J. (orally)—This is an appeal from
a judgment of the Trial Division dismissing a
motion by the appellant for an 'order striking out
certain portions of the respondent's statement
of claim or, in the alternative, for an order for
particulars.
Before summarizing it, it may be helpful if I
say that, as I understand it, the statement of
claim is, in part, a "statement of the material
facts on which the party pleading relies", as
contemplated by Rule 408(1), and is, in part, an
indication of the various statutory provisions or
causes of action that the plaintiff relies on by
virtue of those facts. This indication of the
statutory provisions or causes of action relied
on would seem to me to be permissible and
proper pleading having regard to Rules 409(b)
and 412, which read as follows:
Rule 409. A party shall plead specifically any matter (for
example, performance, release, a statute of limitation, pre
scription, fraud or any fact showing illegality)
(b) that, if not specifically pleaded, might take the oppo
site party by surprise;
Rule 412. (1) A party may by his pleading raise any point
of law.
(2) Raising a question of law or an express assertion of a
conclusion of law—such as an assertion of title to proper-
ty—shall not be accepted as a substitute for a statement of
material facts on which the conclusion of law is based.
As I read the statement of claim, the material
facts pleaded are to be found in paragraphs 3
to 7, inclusive, and in paragraphs 14 and 15. I
would summarize the material facts pleaded in a
manner that, I hope, is sufficient for present
purposes, as follows:
(1) the plaintiff is the owner of the trade mark
"MOORE" for use in association with certain
specified articles, which trade mark is regis
tered in the Canadian Trade Mark Office, and
the plaintiff has for many years been engaged
in the business of manufacturing and selling
in Canada products and equipment used by
the forest and lumber products industry
(including those in respect of which the afore
said trade mark was registered) which prod
ucts and equipment are widely advertised,
sold and identified by the trade mark
"MOORE";
(2) the plaintiff has established a valuable
goodwill and reputation under that trade mark
among dealers in and users of such products
and equipment;
(3) in 1970, the defendant acquired a United
States company with the word "MOORE" in its
name, which company had not, prior to that
time, used the trade mark "MOORE" in Canada
in association with its wares, and a company
called Irvington Forest Industries Inc., which
company was a competitor of the plaintiff in
Canada, and merged those two companies to
form its "IRVINGTON MOORE" division;
(4) in late 1970, the defendant commenced
carrying on the business in Canada of offering
for sale, selling and supplying products and
equipment intended for use in the lumber and
forest industry and falling within the class of
wares in respect of which the plaintiff's afore
said trade mark was registered under the
trade marks and trade names "MOORE", "IRV-
INGTON MOORE" and "MOORE DRY KILN
COMPANY";
(5) the defendant intends to and threatens to
continue so carrying on business; and
(6) as a result of its so carrying on business
the plaintiff has suffered damage and the
defendant has made a profit.
The remainder of the statement of claim con
sists of an assertion that the defendant's use of
the trade marks "MOORS", "IRVINGTON MOORE"
and "MOORE DRY KILN COMPANY" and the trade
names "MOORE", "IRVINGTON MOORE" and
"MOORE DRY KILN COMPANY", each constitute
(a) breach of the registered trade mark by
virtue of either section 19 or section 20 of the
Trade Marks Act,
(b) use of the registered trade mark in a
manner likely to have the effect of depreciat
ing the value of the goodwill attaching thereto
contrary to section 22 of the Trade Marks
Act,
(c) directing public attention to its wares or
business in such a way as to cause or to be
likely to cause confusion in Canada between
the defendant's wares or business and the
wares or business of the plaintiff, and
(d) a passing off of the defendant's wares and
business as and for the wares and business of
the plaintiff.
The first branch of the motion was for an
order striking out the allegations in paragraphs 7
to 13 of the statement of claim, which consist
(a) of the allegation (paragraph (4) supra) that,
in late 1970, the defendant commenced offer
ing for sale, etc., products and equipment that
fall within the class in respect of which the
plaintiff's trade mark was registered and did
so under trade marks and trade names con
sisting of the word "MOORE" or that word
along with other words, and
(b) of the paragraphs that indicate the various
causes of action asserted on the basis of the
facts alleged in the rest of the statement of
claim (as summarized in paragraphs (a) to (d)
supra).
I am of opinion that this branch of the motion
must fail. There is a clear allegation, when the
allegation of fact attacked is read with para
graph 14 of the statement of claim, that the
defendant has been, since late in 1970, selling
goods of the kind in respect of which the plain
tiff's trade mark is registered under trade marks
and trade names consisting of or including that
trade mark. Those facts constitute a good cause
of action or at least a fairly arguable cause of
action and the allegation of fact attacked is an
essential part of that cause of action. In so far
as the other parts of the statement of claim that
are sought to be struck out are concerned, they
are not allegations of fact but, as already
described, they are indications of the various
causes of action, that is to say the various legal
bases for the relief claimed that the plaintiff
proposes to raise on the facts otherwise alleged.
In my view, such parts of a statement of claim
should not be reviewed on an application to
strike out, where the material facts alleged do
constitute an arguable cause of action, except in
an extreme case. The time to decide whether the
material facts otherwise alleged fall within the
various causes of action indicated or whether,
indeed, what are set out as being causes of
action are actually causes of action should nor
mally be after argument at trial. On the other
hand, the plaintiff must realize that he has
restricted himself to proof of the material facts
otherwise alleged and that he cannot bring evi
dence to establish facts that he says are implied
by this type of pleading. (See Rule 412(2).) To
avoid any doubt, I am saying that paragraphs 8
to 13 of the statement of claim are not allega
tions of material facts and cannot be a basis
either for discovery or for evidence at trial.
In so far as the motion asked for particulars, I
am of the view that the appeal must be
dismissed.
What are and what are not sufficient particu
lars in a statement of claim, either for purposes
of pleading or for purposes of trial, must be
determined in each case having regard to the
nature of the particular matter. Where an
infringement consisting of a single transaction is
alleged, normally, I should have thought there
must be sufficient particulars so that the
defendant can identify that transaction, as well
as that can be done with the information at the
disposal of the plaintiff. Here, however, what is
alleged is a "continuing" infringement consist
ing of the carrying on of a business from a
defined date to the time of pleading by selling,
etc., a defined class of goods under the plain-
tiff's registered trade mark or marks or names
that are confusing therewith. In the absence of
evidence as contemplated by Rule 319 that the
defendant is unable to plead without something
more specific, I am of the view that such a
pleading sufficiently defines an alleged infringe
ment. In fact, in this case, it would not appear
that there is any need for particulars. The appel
lant must know what business it carried on in
Canada, what products and equipment it sold
and under what trade marks it sold them. That
being so, I can see no reason why it should have
any difficulty in deciding how to plead.
I am of opinion that the appeal should be
dismissed with costs.
* * *
CAMERON D. J. concurred.
* * *
THURLOW J.—I agree that the appeal fails and
should be dismissed.
I am not satisfied that subparagraphs (e) of
paragraphs 8-13 inclusive are not cases of the
extreme variety referred to by the Chief Justice,
which might on that basis be struck out, but I do
not dissent from the reasons or the result pro
posed by him.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.