Epost Innovations Inc. v. Canada Post Corp., (1999) 21 B.C.T.C. 208 (SC)

• Jurisdiction: British Columbia
• Court: Supreme Court of British Columbia (Canada)
• Judge: J.T. Edwards, J.
• Citation: (1999), 21 B.C.T.C. 208 (SC)
• Date: 14 September 1999

Epost Innovations Inc. v. Can. Post (1999), 21 B.C.T.C. 208 (SC)

MLB headnote and full text

Temp. Cite: [1999] B.C.T.C. TBEd. OC.024

Epost Innovations Inc. (plaintiff) v. Canada Post Corporation (defendant)

(C992649)

Indexed As: Epost Innovations Inc. v. Canada Post Corp.

British Columbia Supreme Court

Vancouver

J.T. Edwards, J.

September 14, 1999.

Summary:

Epost Innovations (Epost) carried on busi­ness in British Columbia developing soft­ware for business and personal use. Epost filed a trademark application for "Cypost". The Registrar of Trademarks gave public notice of the adoption and use of the official mark "cyberposte" by the Canada Post Cor­pora­tion. Canada Post filed a statement of oppo­sition against Epost's trademark appli­cation. Epost did not contest the statement of oppo­sition and its application was deemed aban­doned. Canada Post wrote Epost de­manding that they immediately cease using the names and trademarks "Epost" and "Cypost". Epost applied for declaratory relief. Canada Post commenced an action in the Federal Court.

The British Columbia Supreme Court dismissed Epost's application. Declaratory relief was unavailable where Canada Post had not infringed Epost's rights. Further, the declaration sought would serve no useful purpose and would not settle the real issues between the parties. A declaration that was claimed in its own right and not as inciden­tal to some other consequential relief, should only be granted in special circumstances. Another remedy was available to Epost, namely a judgment in its favour in the Fed­eral Court. The substantive action was being carried on in the Federal Court and that was where the parties' rights should be settled.

Practice - Topic 5652

Judgments and orders - Declaratory judg­ments - When available - General - See paragraphs 27 to 51.

Practice - Topic 5666

Judgments and orders - Declaratory judg­ments - Bars - Adequate alternate remedy - See paragraphs 46 to 51.

Cases Noticed:

Inspiration Management Ltd. v. McDermid St. Lawrence (1989), 36 B.C.L.R.(2d) 202 (C.A.), refd to. [para. 29].

Clearly Canadian Beverage Corp. v. Remic Marketing & Distribution Inc. (1992), 22 C.P.C.(3d) 387 (B.C.S.C.), refd to. [para. 32].

Sunshine Village Corp. v. Sun Peaks Corp. (1994), 59 C.P.R.(3d) 539 (B.C.S.C.), leave to appeal refused (1995), 59 C.P.R.(3d) 541 (B.C.C.A.), refd to. [para. 34].

Kaiser Resources Ltd. v. Western Canada Beverage Corp. (1992), 71 B.C.L.R.(2d) 236 (S.C.), refd to. [para. 38].

Fraser v. Houston, [1996] B.C.J. No. 2096 (S.C.), refd to. [para. 41].

Heller v. Greater Vancouver Regional District (1992), 17 B.C.A.C. 1; 29 W.A.C. 1 (C.A.), refd to. [para. 44].

Williams v. Jackson (1904), 11 B.C.L.R. 133 (B.C.S.C.), appld. [para. 45].

Russian Commercial and Industrial Bank v. British Bank for Foreign Trade Ltd., [1921] All E.R. 329 (H.L.), refd to. [para. 45].

Kourtessis et al. v. Minister of National Revenue et al., [1993] 2 S.C.R. 53; 153 N.R. 1; 27 B.C.A.C. 81; 45 W.A.C. 81; [1993] 4 W.W.R. 225; 81 C.C.C.(3d) 286; 102 D.L.R.(4th) 456; 78 B.C.L.R.(2d) 257, refd to. [para. 46].

Canadian Olympic Association v. Konica Canada Inc. et al. (1991), 135 N.R. 143; 39 C.P.R.(3d) 400 (F.C.A.), refd to. [para. 49].

Authors and Works Noticed:

McLaughlin and Taylor, British Columbia Practice (2nd Ed. 1999), pp. 5-141, 5-142 [para. 45].

Counsel:

D.L. Munn and M. Yang, for the plaintiff;

M.F. Manson and T.P. Lo, for the defen­dant.

J.T. Edwards, J., of the British Columbia Supreme Court, heard this action at Van­couver, British Columbia, on August 26 and 27, 1999, and delivered the following rea­sons for judgment September 14, 1999.