Date: 19990810
Docket: T-1459-97
BETWEEN:
ITV TECHNOLOGIES, INC.
Plaintiff
(Defendant by Counterclaim)
- and -
WIC TELEVISION LTD.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER
TEITELBAUM, J:
[1] This is an application, made by the plaintiff, for summary judgment for:
| 1. an order for expungement of the Defendant"s Canadian Trade-Mark registration no. 286,066 for ITV & DESIGN |
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| 2. an order for expungement of the Defendant"s Canadian Trade-Mark registration no. 467,002 for ITV |
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| 3. an order to amend the Trade-mark register by the insertion of a disclaimer to the exclusive use of the letters "ITV" in association with pre-recorded video tapes" in the Defendant"s Canadian Trademark registration no. 4900099 for ITV & design |
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| 4. a declaration that the Plaintiff"s internet domain name ITV NET and its corporate name ITV TECHNOLOGIES, INC. do not infringe the registered or common law trade-mark rights of the Defendant; |
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| 5. an order that the Defendant pay to the Plaintiff its damages caused by the injunction granted November 25, 1997, and exemplary damages if the Court sees fit, the amount to be determined on a reference to a Judge. |
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| 6. an order that the Plaintiff have its costs of the action to date, payable forthwith. |
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[2] The grounds, as listed in the Notice of Motion, for the request for summary judgment are:
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1. the Defendant has abandoned the use of the Trade-mark registered as no. 286,066 for ITV & DESIGN; |
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2. the Defendant"s Trade-mark registration as no. 467,002 for ITV was not registrable at the time it was registered and was not distinctive at the time these proceedings were commenced. |
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3. the Defendant"s Trade-mark registration as no. 44900099 for ITV & design in association with pre-recorded video tapes was not registrable at the time it was registered and was not distinctive at the time these proceedings were commenced to the extent that the registrant claims exclusive rights to the use of the letters "ITV" for such wares; |
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4. a) "ITV" is incapable of distinguishing the services of one trade in interactive television services from those of another; |
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b) "ITV" is clearly descriptive of the Plaintiff"s services; |
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c) in its use of the acronym "ITV", the Plaintiff has used a standard term in its field and has not misrepresented that its services were those of the Defendant or deceived the public; |
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d) in its use of the term "ITV", the Plaintiff has not diminished any goodwill belonging to the Defendant; |
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5.a) the Defendant obtained the injunction by giving its undertaking to compensate the Plaintiff for any damages ordered by the Court to be paid as a result of the November 25, 1997 injunction having been granted, and the Plaintiff has suffered and continues to suffer damages as a result of the injunction, in an amount to be determined; |
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b) there is an issue as to whether Defendant obtained or used the November 25,1997 injunction with misrepresentation or malice; |
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[3] As evidence for the summary judgment, the plaintiff filed two affidavits of William Mutual, the President of the plaintiff company, as well as the affidavits of Michael Silva, Mohd. Shahriman Sidek, Keith Moore, Harjono Zain and Peter Chrzanowski.
[4] Attached to the affidavit of William Mutual, sworn on May 7, 1999, are 24 exhibits, each containing many pages of information.
[5] Attached to the affidavit of William Mutual, found under Tab 9 of the plaintiff"s Motion Record, there are at least six exhibits, but the page showing the date on which it was sworn appears to be missing.
[6] Mr. Michael P. Silva is a consultant. He states in paragraph 2. of his affidavit sworn on March 26, 1999:
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I worked for ITV Technologies, Inc. from August, 1996 to July 1997. I am currently working with Brauning Consultants in the United States, where I am a principal. We consult to Microsoft Corp., Ericsson, Inc. ("Ericsson"), and several startups in internet and wireless technologies. |
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[7] Mr. Silva had been an employee of the plaintiff from August 1996 to July 1997 but fails to state what he did for the plaintiff as an employee.
[8] Mr. Sidek swore an affidavit on February 10, 1999. Mr. Sidek is a Managing Director/President of a Malaysian company which is "one of the foremost Internet Design companies in Malaysia".
[9] Mr. Keith Moore swore his affidavit on May 26, 1999. Mr. Moore is the Chief Executive Office (CEO) of ITVnet, Inc. of California.
[10] Mr. Harjono Zain swore his affidavit on June 2, 1999. He is the CEO of a Malaysian telecommunications company and has "a long history in management, operation and funding of ventures in the Hi-technology industry.
[11] Mr. Peter Chrzanowski is President of Extreme Explorations Film & Video Productions Inc. who used ITV.net as his "internet provider" commencing in January 1996.
[12] There were exhibits attached to some of the affidavits of the above affiants.
[13] The plaintiff also filed as evidence transcripts of the examinations for discovery of the defendant Wallace Irvine Kirk who also filed affidavits for and on behalf of the defendant.
[14] The plaintiff is a British Columbia company with its head office in Vancouver. Plaintiff operates an internet based business since November 1995 with the web address www.itv.net "pursuant to which it provides a worldwide network of internet video server computers and offers co-hosting/server parking and net-casting services ... " (see paragraph 3 of plaintiff"s Statement of Claim). The plaintiff uses a business name ITV.net and has done so since November 21, 1995 to identify its services with the web address www.itv.Net (see paragraph 4, Statement of Claim).
[15] The defendant is the registered owner of Canadian Trade-mark registration No. 467,002 with a filing date of January 30,1 996 for the trade-mark ITV in respect of the operation of a television station. This trade-mark has been in use by the defendant and its predecessor in title since September 1, 1974.
[16] With respect to television programs, radio programs, cable television, animation production, films, video discs, etc. the defendant, because of the defendant"s predecessor in title, is the owner of the trade-mark ITV & Design pursuant to Canadian Trade-mark registration No. 286,066 which has been used by WIC (the defendant) and its predecessors in title since August 19,1982.
[17] The plaintiff is claiming, in its Statement of Claim for an order expunging defendant"s trade-marks No. 467,002 and No. 286,066, a declaration that the plaintiff is not precluded by trade-marks No. 467,002 and No. 286,066 from using the web address www.itv.net and costs.
[18] In the Notice of Motion, and as I have stated, the plaintiff is asking for summary judgment for more than what is prayed for in the Statement of Claim.
[19] After hearing the oral submission of counsel for the plaintiff, I believe that what plaintiff is now requesting is that I decide that plaintiff has the full right to use the web site www.itv.net notwithstanding the fact that, at the present time, the defendant may be, although invalidly, the owner of two trade-marks containing the letters ITV and ITV & Design for the above stated grounds.
[20] Plaintiff agrees that the issue of damages cannot be decided by summary judgment and will have to be referred to a judge for determination.
[21] In the case of Nature"s Path Foods Inc. v. Country Fresh Enterprises Inc. and Sukhdevpaul Dhanoa, T-2647-97, December 3, 1998, F.C.T.D., Mr. Justice Rouleau, in discussing the purpose of summary judgment, states at page 3:
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The purpose of the summary judgment provisions in the Federal Court rules is to allow the Court to summarily dispense with those cases which it considers ought not to proceed to trial because there is no genuine issue raised in the pleadings. It is a determination to be made on the particular circumstances of each case and on the law and the facts submitted in support of the claim or defence. |
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The jurisprudence has established that summary judgment will only be granted in the clearest of cases. In Pallman Maschinenfabrik G.m.b.H CO. KG (unreported, June 14, 1995, T-1065-93), Teitelbaum, J. made the following comments with respect to the summary judgment rules at p. 19 - 20: |
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... summary judgment should not be granted on an issue where either on the whole of the evidence the judge cannot find the necessary facts or it would be unjust to do so. I am of the view that summary judgment should only be granted in circumstances where the facts are clear. I am also of the opinion that, in general, summary judgment is not the proper means to obtain judgment where the issues before the Court involve the infringement or the invalidity of a patent. |
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[22] In the case of Federated Co-Operatives Limited v. Her Majesty the Queen, T-185-94, June 25, 1999, F.C.T.D., Mr. Justice Dubé states what the test is for a summary judgment:
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The general principles governing summary judgment have been summarized by Madame Justice Tremblay-Lamer of this Court in Granville Shipping Co. v. Pegasus Lines Ltd. [1996] 2 F.C. 853 (T.D.) as follows, at pages 859-860: |
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1. the purpose of the provisions is to allow the Court to summarily dispense with cases which ought not to proceed to trial because there is no genuine issue to be tried (Old Fish Market Restaurants Ltd. v. 1000357 Ontario Inc. et al); |
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2. there is no determinative test (Feoso Oil Ltd. v. Sarla (The) but Stone J.A. seems to have adopted the reasons of Henry J. in Pizza Pizza Ld. v. Gillespie. It is not whether a party cannot possibly succeed at trial, it is whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial; |
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3. each case should be interpreted in reference to its own contextual framework (Blyth) and (Feoso); |
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4. provincial practice rules (especially Rule 20 of the Ontario Rules of Civil Procedure, [R.R.O. 1990, Reg. 194 can aid an interpretation (Feoso and Collie); |
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5. this Court may determine questions of fact and law on the motion for summary judgment if this can be done on the material before the Court (this is broader than Rule 20 of the Ontario Rules of Civil Procedure) (Patrick); |
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6. on the whole of the evidence, summary judgment cannot be granted if the necessary facts cannot be found or if it would be unjust to do so (Pallman and Sears); |
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7. in the case of a serious issue with respect to credibility, the case should go to trial because the parties should be cross-examined before the trial judge (Forde and Sears). The mere existence of apparent conflict in the evidence does not preclude summary judgment; the court should take a "hard look" at the merits and decide if there are issues of credibility to be resolved (Stokes ). |
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It should be added that in the case of Pizza Pizza v. Gillespie (1990), 75 O.R. (2d) 225 (Ont. Ct. (Gen. Div.)), Henry J. set out the now well known "best foot forward" principle, which requires the party against which a summary judgment motion has been launched to produce sufficient evidence to show that there is a genuine issue for trial. In other words, it is not sufficient for the respondent party to merely state that more and better evidence will be available at trial: "the occasion is now". |
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| [23] It is clearly apparent to me that granting summary judgment would not be appropriate with the facts as they exist. The evidence raises many valid and complex issues of fact and law such as distinctiveness and confusion. |
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| [24] I am satisfied that this case, in its present state, with volumes of material requiring further and better explanation, is not ready for determination by virtue of a summary judgment. |
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| [25] I was told by counsel that, to the best of their knowledge, there is no Canadian jurisprudence on the issue of a trade-mark versus an internet name such as in the case at bar. |
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| [26] Surely this issue should be decided after a full trial. It would appear to me that experts would have to be called to give evidence and be cross-examined before a judge and an issue of credibility may arise. |
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| [27] In addition, a Court will have to determine the issue of damages. In such a case, I am satisfied it is preferable that all issues be decided by the trial judge. |
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| [28] Furthermore, in the present case, I am satisfied the parties had agreed that the matter should be sent to trial and would make a request for an expedited hearing. This indicates to me that the parties agreed that there was an issue to be sent to be tried. |
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| [29] I am clearly satisfied, after reviewing the many affidavits and exhibits filed that a trial of the issues is necessary. |
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| [30] For these reasons, the plaintiff"s application for summary judgment is dismissed. |
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| [31] The parties may, within a period of 15 days of today"s date, make written submissions with regard to the issue of costs. |
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