Date: 19980903
Docket: T-1254-98
MONTRÉAL, QUEBEC, THE 3RD DAY OF SEPTEMBER, 1998
Present: Mr. RICHARD MORNEAU, PROTHONOTARY
Between:
SCANWELL INTERNATIONAL INC.,
SCANWELL FREIGHT EXPRESS (HK) LIMITED,
SCANWELL CONTAINER LINES (HK) LIMITED,
AND
ADAM HASSAN
Plaintiffs
AND
SCANWELL FREIGHT EXPRESS CANADA INC.,
SCANWELL CONTAINER LINES CANADA INC.,
AND
BUYERS CONSOLIDATORS EXPRESS
Defendants
ORDER
This motion by the defendants to strike out the action is allowed, with costs.
The dates of September 23 and 24, 1998, which had provisionally been reserved by this Court for the hearing in relation to this case of a motion by the plaintiffs for an interlocutory injunction, are vacated.
| Richard Morneau |
| Prothonotary |
Certified true translation
Bernard Olivier
Date: 19980903
Docket: T-1254-98
Between:
SCANWELL INTERNATIONAL INC.,
SCANWELL FREIGHT EXPRESS (HK) LIMITED,
SCANWELL CONTAINER LINES (HK) LIMITED,
AND
ADAM HASSAN
Plaintiffs
AND
SCANWELL FREIGHT EXPRESS CANADA INC.,
SCANWELL CONTAINER LINES CANADA INC.,
AND
BUYERS CONSOLIDATORS EXPRESS
Defendants
REASONS FOR ORDER
Mr. RICHARD MORNEAU, PROTHONOTARY:
[1] This is a motion by the defendants under Rules 208 and 221 of the Federal Court Rules, 1998 (the "Rules") to obtain the striking out of the plaintiffs" statement of claim primarily on the ground that this action is not within the jurisdiction of this Court but rather within the jurisdiction of a provincial court, given that a consideration of the relief sought by the plaintiffs must inevitably involve a determination that the defendants breached an agreement that had existed between the parties for several years.
[2] The central paragraphs of the statement of claim that disclose the essence of this contention, or the central issue between the parties, are paragraphs 12 to 15. They read as follows:
| 12. From 1986 the defendant Scanwell Freight Canada has been providing freight forwarding services in Canada and abroad for the Scanwell Network. In conjunction with its services the said defendant has used the trade and service mark Scanwell with the authority of the plaintiff Scanwell International and its predecessors. |
| 13. From 1989 the defendant Scanwell Container Canada has been providing NVOC services both in Canada and abroad for the Scanwell Network. In conjunction with its services the said defendant has used the trade and service mark Scanwell with the authority of the plaintiff Scanwell International and its predecessors. |
| 14. On or about the first day of May, 1998, or at the latest, the first day of June 1998, the defendants Scanwell Container Canada and Scanwell Freight Canada have represented the defendant BCE in conjunction with NVOC and freight forwarding services provided by BCE. |
| 15. In conjunction with services provided on behalf of BCE, and/or in pursuit of their own business interests, the defendants Scanwell Container Canada and Scanwell Freight Canada, or one of them, have used the service mark and trade-mark of Scanwell independently of the Scanwell Network in the following manner:... [Emphasis added] |
[3] Although it is clear from what the plaintiffs" counsel says that the action is intended to be strictly an action in passing off under paragraph 7(b) of the Trade-marks Act , R.S.C. 1985, c. T-13 (the "Act"), it is clear to me that if the plaintiffs are to be given any relief under that Act, it will be necessary to rule on whether the defendants terminated or breached this authorization agreement that had apparently been granted to them by the plaintiffs and that would have enabled the defendants to use the Scanwell mark for close to ten years without creating the situation that paragraph 7(b) of the Act is intended to prohibit. (See Engineering Dynamics Ltd. v. Joannou (1996), 122 F.T.R. 174 and the cases relied on in support of the ratio of that decision.)
[4] Accordingly, it is necessary to allow this motion by the defendants in regard to the lack of jurisdiction of this Court and to strike out the plaintiffs" statement of claim.
[5] Given this conclusion, there is no need to rule on the other remedies sought by the defendants in their motion.
[6] The parties must consequently be informed that the dates of September 23 and 24, 1998, which had provisionally been reserved by this Court for the hearing in relation to this case of a motion by the plaintiffs for an interlocutory injunction, are vacated.
Richard Morneau
Prothonotary
MONTREAL, QUEBEC
September 3, 1998
Certified true translation
Bernard Olivier
Federal Court of Canada
Court file no. T-1254-98
BETWEEN
| SCANWELL INTERNATIONAL INC., |
| SCANWELL FREIGHT EXPRESS (HK) LIMITED, |
| SCANWELL CONTAINER LINES (HK) LIMITED, |
| AND |
| ADAM HASSAN |
| Plaintiffs |
| - and - |
| SCANWELL FREIGHT EXPRESS CANADA INC., |
| SCANWELL CONTAINER LINES CANADA INC., |
| AND |
| BUYERS CONSOLIDATORS EXPRESS |
Defendants
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| FILE NO. T-1254-98 |
| STYLE: SCANWELL INTERNATIONAL INC., |
| SCANWELL FREIGHT EXPRESS (HK) LIMITED, |
| SCANWELL CONTAINER LINES (HK) LIMITED, |
| AND |
| ADAM HASSAN |
| Plaintiffs |
| AND |
| SCANWELL FREIGHT EXPRESS CANADA INC., |
| SCANWELL CONTAINER LINES CANADA INC., |
| AND |
| BUYERS CONSOLIDATORS EXPRESS |
| Defendants |
| PLACE OF HEARING: Montréal, Quebec |
| DATE OF HEARING: September 3, 1998 |
REASONS FOR ORDER OF RICHARD MORNEAU, PROTHONOTARY
| DATED: September 3, 1998 |
APPEARANCES:
Mr. Laurier Beauchamp for the plaintiffs
Mr. Louis Buteau/Mr. George Pollack for the defendants
| Scanwell Freight Express Canada Inc. |
and Scanwell Container Lines Canada Inc.
SOLICITORS OF RECORD:
Paterson, MacDougall for the plaintiffs
Mr. Peter Jones
Toronto, Ontario
| Spoule, Castonguay, Pollack Mr. Louis Buteau/Mr. George Pollack Montréal, Quebec |
for the defendants Scanwell Freight Express Canada Inc. and Scanwell Container Lines Canada Inc. |