Decor Grates Inc. v. Imperial Manufacturing Group Inc. et al., (2015) 472 N.R. 109 (FCA)

• Judge: Stratas, Webb and Scott, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: September 12, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2015), 472 N.R. 109 (FCA);2015 FCA 100

Decor Grates v. Imperial Mfg. Group (2015), 472 N.R. 109 (FCA)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

Temp. Cite: [2015] N.R. TBEd. MY.003

Imperial Manufacturing Group Inc. and Home Depot of Canada Inc. (appellants) v. Decor Grates Incorporated (respondent)

(A-415-13; 2015 FCA 100; 2015 CAF 100)

Indexed As: Decor Grates Inc. v. Imperial Manufacturing Group Inc. et al.

Federal Court of Appeal

Stratas, Webb and Scott, JJ.A.

April 20, 2015.

Summary:

The plaintiff sued the defendants for infringement of two designs for floor heating grates that were registered under the Industrial Design Act. The defendants sought particulars regarding where and how long the plaintiffs had been selling their products; how, when and by whom each design was created and finalized; and all floor registers that had been sold to the defendant Home Depot from 1990 to January 2013.

The Federal Court denied the motion. The defendants appealed.

The Federal Court of Appeal dismissed the appeal.

Practice - Topic 1915

Pleadings - Particulars - General - Application for - Considerations - [See second Trademarks, Names and Designs - Topic 8241 ].

Practice - Topic 1922

Pleadings - Particulars - Object or purpose of particulars - For purposes of pleading - [See first Trademarks, Names and Designs - Topic 8241 ].

Practice - Topic 1934

Pleadings - Particulars - Bars to granting order - Where particulars are available to party making demand - [See second Trademarks, Names and Designs - Topic 8241 ].

Practice - Topic 1962

Pleadings - Particulars - Particulars in specific proceedings - Trademark infringement (incl. designs) - [See both Trademarks, Names and Designs - Topic 8241 ].

Practice - Topic 8800.1

Appeals - Duty of appellate court regarding findings of mixed law and fact by a trial judge - [See Practice - Topic 8804 ].

Practice - Topic 8804

Appeals - General principles - Duty of appellate court regarding discretionary orders - The defendants' motion for particulars was denied - At issue on the defendants' appeal was the standard of review - The defendants asserted that the motion judge had weighed the relevant factors improperly and that the appeal court should reweigh the factors and substitute its discretion for that of the motion judge - The Federal Court of Appeal rejected the defendants' position - Discretionary orders such as the one here were the result of applying law to the particular facts of the case - These were questions of mixed fact and law - Under Housen v. Nikolaisen et al. (2002 S.C.C.) "Housen", the standard of review for questions of mixed fact and law was "palpable and overriding error" unless there was an extricable legal principle at issue - The line of authority on the standard of review of discretionary interlocutory orders relied on by the defendants began with Bull (David) Laboratories (Canada) Inc. v. Pharmacia Inc. et al. (1995 F.C.A.) "David Bull" - The court outlined a number of problems with the David Bull line of authorities - Housen was a binding authority - Hryniak v. Mauldin (2014 S.C.C.) expressed the Housen standard, which remained the basis on which appellate courts could interfere with discretionary decisions - Only the Housen articulation of the standard of review was to be used - Absent error on a question of law or an extricable legal principle, intervention was warranted only in cases of palpable and overriding error - See paragraphs 14 to 29.

Trademarks, Names and Designs - Topic 8241

Designs - Practice - General - The plaintiff sued the defendants for infringement of two designs for floor heating grates that were registered under the Industrial Design Act - The defendants sought particulars regarding where and how long the plaintiffs had been selling their products; how, when and by whom each design was created and finalized; and all floor registers that had been sold to the defendant Home Depot from 1990 to January 2013 - The defendants asserted that the particulars were relevant to two defence arguments: (1) whether the plaintiff was a "proprietor" under the Act and (2) whether the plaintiff's applications for registration were filed more than one year after the designs were published - The motion for particulars was denied - The Federal Court of Appeal dismissed the defendants' appeal - The purpose of particulars was to facilitate the ability to plead - The defendants appeared to have a discovery purpose in mind, supporting their request for particulars on the basis that the information sought was relevant and material to the legal and factual issues - However, particulars were not supplied because they would make a pleading better or more forceful - They were supplied because without them, the party could not plead in response to an important point - See paragraphs 30 to 37.

Trademarks, Names and Designs - Topic 8241

Designs - Practice - General - The plaintiff sued the defendants for infringement of two designs for floor heating grates that were registered under the Industrial Design Act - The defendants sought particulars regarding where and how long the plaintiffs had been selling their products; how, when and by whom each design was created and finalized; and all floor registers that had been sold to the defendant Home Depot from 1990 to January 2013 - The defendants asserted that the particulars were relevant to two defence arguments: (1) whether the plaintiff was a "proprietor" under the Act and (2) whether the plaintiff's applications for registration were filed more than one year after the designs were published - The motion for particulars was denied - The Federal Court of Appeal dismissed the defendants' appeal - There was no palpable and overriding error in the motion judge's determination that the defendants' request was a "fishing expedition" - Further, the motion judge found that some of the particulars sought were known to the defendant Home Depot and could be shared with the other defendant, that the particulars sought went far beyond what was necessary to trigger the defences and that many would be time-consuming to locate - There was no palpable and overriding error in those findings - There was no error that was obvious and went to the outcome's very core - See paragraphs 38 to 41.

Cases Noticed:

Bull (David) Laboratories (Canada) Inc. v. Pharmacia Inc. et al., [1995] 1 F.C. 588; 176 N.R. 48; 58 C.P.R.(3d) 209 (F.C.A.), not folld. [para. 14].

Reliance Comfort Limited Partnership v. Commissioner of Competition, [2013] N.R. Uned. 57; 2013 FCA 129, refd to. [para. 14].

Apotex Inc. v. Governor-in-Council et al. (2007), 370 N.R. 336; 2007 FCA 374, refd to. [para. 14].

Housen v. Nikolaisen et al., [2002] 2 S.C.R. 235; 286 N.R. 1; 219 Sask.R. 1; 272 W.A.C. 1; 2002 SCC 33, folld. [para. 19].

H.L. v. Canada (Attorney General) et al., [2005] 1 S.C.R. 401; 333 N.R. 1; 262 Sask.R. 1; 347 W.A.C. 1; 2005 SCC 25, refd to. [para. 19].

Penner v. Niagara Regional Police Services Board et al., [2013] 2 S.C.R. 125; 442 N.R. 140; 304 O.A.C. 106; 2013 SCC 19, refd to. [para. 23].

Hryniak v. Mauldin, [2014] 1 S.C.R. 87; 453 N.R. 51; 314 O.A.C. 1; 2014 SCC 7, refd to. [para. 23].

Ontario Federation of Anglers and Hunters v. Alderville Indian Band et al. (2014), 461 N.R. 327; 2014 FCA 145, refd to. [para. 24].

Elders Grain Co. et al. v. Ship Ralph Misener et al., [2005] 3 F.C.R. 367; 334 N.R. 1; 2005 FCA 139, refd to. [para. 25].

Peguis First Nation v. Canada (Attorney General) (2014), 456 N.R. 239; 2014 FCA 7, refd to. [para. 26].

Abbott Laboratories et al. v. Canada (Minister of Health) et al. (2010), 404 N.R. 356; 85 C.P.R. (4th) 279; 2010 FCA 168, refd to. [para. 26].

Sandoz Canada Inc. v. Abbott Laboratories et al. - see Abbott Laboratories et al. v. Canada (Minister of Health) et al.

Apotex Inc. v. Bristol-Myers Squibb Co. et al. (2011), 414 N.R. 162; 2011 FCA 34, refd to. [para. 27].

Procter & Gamble Co. v. Nabisco Brands Ltd. (1985), 62 N.R. 364; 5 C.P.R.(3d) 417 (F.C.A.), refd to. [para. 28].

Merchant Law Group et al. v. Canada Revenue Agency et al. (2010), 405 N.R. 160; 321 D.L.R.(4th) 301; 2010 FCA 184, refd to. [para. 37].

JP Morgan Asset Management (Canada) Inc. v. Minister of National Revenue et al., [2014] 2 F.C. 557; 450 N.R. 91; 2013 FCA 250, refd to. [para. 37].

South Yukon Forest Corp. et al. v. Canada (2012), 431 N.R. 286; 2012 FCA 165, refd to. [para. 40].

Waxman v. Waxman (2004), 186 O.A.C. 201; 44 B.L.R.(3d) 165 (C.A.), refd to. [para. 40].

Counsel:

Pierre Robichaud and Alessandro Colonnier, for the appellants;

R. Aaron Rubinoff and John Siwiec, for the respondent.

Solicitors of Record:

Andrews Robichaud, P.C., Ottawa, Ontario, for the appellants;

Perley-Robertson, Hill & McDougall LLP, Ottawa, Ontario, for the respondent.

This appeal was heard at Toronto, Ontario, on September 12, 2014, by Stratas, Webb and Scott, JJ.A., of the Federal Court of Appeal. On April 20, 2015, Stratas, J.A., delivered the following reasons for judgment for the court.