Date: 19990720
Docket: T-2658-97
BETWEEN:
CANADIAN MEMORIAL SERVICES
Plaintiff
- and -
PERSONAL ALTERNATIVE
FUNERAL SERVICES LIMITED,
LAWRENCE GEORGE LITTLE,
JAKE H. WIEBE, and
RONALD YOUNG
Defendants
REASONS FOR ORDER
REED J.
[1] This is an appeal of a prothonotary"s decision refusing to require production by the plaintiff of unexpurgated versions of certain settlement agreements it signed with a number of defendants to other actions.
[2] The plaintiff"s claim against the defendants is for trade-mark infringement, the trade-marks being variations of the phrase SIMPLE ALTERNATIVE, used in association with funeral supplies and services. Part of the defendants" response to the plaintiff"s claim is that the word "alternative" is descriptive and common in the trade, and the plaintiff has countenanced such trade usage without complaint or objection. In responding to that allegation, the plaintiff in paragraph 29 of the affidavit of Eileen Fitzpatrick, referred to the settlement agreements that it had entered into with others. These were subsequently produced to the defendants with sections thereof blanked out.
[3] I have reviewed the agreements and the blanked out portions. I apply the test in reviewing a prothonotary"s decision that is set out in Canada v. Aqua-Gem Investments Ltd. , [1993] 2 F.C. 425 (C.A.) I am persuaded that the prothonotary appears to have overlooked the jurisprudence set out in cases such as Great Atlantic Insurance Co. v. Home Insurance Co., [1981] 2 A11 E.R. 485 (C.A.), Hartz Canada Inc. v. Colgate-Palmolive Co. (1987), 27 C.P.C. (2d) 152 (Ont. H.C.J.), and S & K Processors Ltd. v. Campbell Av. Herring Producers" Ltd. (1983), 35 C.P.C. 146 (B.C.S.C.).
[4] The plaintiff waived whatever confidential status the agreements might have had when it relied upon them and produced them to support its response to the defendant"s position. The plaintiff cannot selectively choose to disclose parts of those documents but not others unless the parts are severable, relating to a different subject, or irrelevant. The parts that have not been disclosed are closely related to those that have been disclosed. They are relevant to the scope of the protection of the trade-mark that the plaintiff asserted in the context of this other litigation. The weight to be given to them is, of course, a matter for the judge hearing the claim on its merits.
[5] I note as well that the settlement agreements are not labelled "confidential", nor are there provisions therein which require the parties to keep the terms of the settlement agreements confidential.
[6] In those circumstances, I conclude that unexpurgated versions of the documents should be provided to the defendants.
"B. Reed"
J.F.C.C.
Toronto, Ontario
July 20, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| COURT NO: T-2658-97 |
| STYLE OF CAUSE: CANADIAN MEMORIAL SERVICES |
| - and - |
| PERSONAL ALTERNATIVE |
| FUNERAL SERVICES LIMITED, |
| LAWRENCE GEORGE LITTLE, |
| JAKE H. WIEBE, and |
| RONALD YOUNG |
DATE OF HEARING: MONDAY, JULY 19, 1999
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: REED J.
DATED: TUESDAY, JULY 20, 1999
APPEARANCES: Ms. Diane La Calamita
For the Plaintiff
Mr. A. Kelly Gill
For the Defendants
SOLICITORS OF RECORD: Deeth Williams Wall
Barrister & Solicitor
National Bank Building
| 150 York Street, Suite 400 |
Toronto, Ontario
M5H 3S5
For the Plaintiff
| Gowling, Strathy & Henderson |
| Barristers & Solicitors |
| 4900 Commerce Court West |
| P.O. Box 438 |
| Station Commerce Court |
| Toronto, Ontario |
| M5L 1J3 |
For the Defendants
FEDERAL COURT OF CANADA
Date: 19990719
Docket: T-2658-97
Between:
| CANADIAN MEMORIAL SERVICES |
Plaintiff
| - and - |
| PERSONAL ALTERNATIVE |
| FUNERAL SERVICES LIMITED, |
| LAWRENCE GEORGE LITTLE, |
| JAKE H. WIEBE, and |
| RONALD YOUNG |
Defendants
REASONS FOR ORDER