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Date: 19991109 Docket: A-349-98 A-350-98 CORAM: STRAYER J.A. ROBERTSON J.A. ROTHSTEIN J.A. BETWEEN: HAVANA HOUSE CIGAR & TOBACCO MERCHANTS LTD. and EMPRESSA CUBANA DEL TABACO trading as CUBATABACO and HABANOS S.A. Appellants
- and - SKYWAY CIGAR STORE Respondent Heard at Toronto, Ontario, on Monday and Tuesday, November 8-9, 1999 Judgment Delivered Orally from the Bench at Toronto, Ontario on Tuesday, November 9, 1999 REASONS FOR JUDGMENT BY: STRAYER J.A.
Date: 19991109 Docket: A-349-98 A-350 -98 CORAM: STRAYER J.A. ROBERTSON J.A. ROTHSTEIN J.A. BETWEEN: HAVANA HOUSE CIGAR & TOBACCO MERCHANTS LTD. and EMPRESSA CUBANA DEL TABACO trading as CUBATABACO and HABANOS S.A. Appellants
- and - SKYWAY CIGAR STORE Respondent REASONS FOR JUDGMENT (Delivered from the Bench at Toronto, Ontario on Tuesday, November 9, 1999) STRAYER J.A.: [1] These two appeals were heard together, arising out of one action in the Trial Division. The appeal in A-350-98 is brought by the appellants against a summary judgment issued by the motions judge declaring invalid, and ordering expunged, four trade marks registered in Canada by the appellant Havana House Cigar & Tobacco Merchants Ltd. ("Havana House"). The appeal in A-349-98 is brought by the appellants against a dismissal of their motion for summary judgment against the respondent for infringement, passing off, and other remedies under section 7 of the Trade-marks Act . To this the respondent cross-appeals, contending that the appellants" action for infringement, passing off, etc. should have been dismissed in its entirety. [2] With respect to appeal A-350-98 concerning the summary judgment declaring invalid and ordering expunged the Canadian trade marks of the appellant Havana House, we are all of the view that the trial judge was correct in ordering as he did. The four trade marks in question are affixed to cigar products in Cuba by the appellants Cubatabaco or Habanos S.A., respectively the manufacturer and export licensee of Cubatabaco. The marks are official to certain cigar products in Cuba and remain on the product to the point of retail sale. Havana House, the Canadian distributor, merely adds its stamp on cigar boxes identifying itself as the exclusive distributor in Canada. The issues as to the validity of the four trade marks, as registered in its own name in Canada by Havana House, involved questions of whether Havana House used the marks prior to registration or at all, and whether they were distinctive of Havana House at the time the attack was launched on the registrations in November, 1996. [3] We are all of the view that the motions judge was correct in finding no proof of use or acquisition of distinctiveness by Havana House. He gave judgment in favour of the defendant on its motion for summary judgment, declaring the four Canadian registered trade marks of Havana House to be invalid and ordering them expunged. We agree with his conclusion and will dismiss the appeal from that decision in file A-350-98. [4] There remains appeal A-349-98 concerning the appellants" motion for summary judgment against the respondent for infringement of their trade marks, as well as for passing off, depreciating the value of good will attached to their trade marks, directing public attention to the respondent"s goods so as to cause confusion, and the use of false descriptions. The motions judge dismissed the appellants" motion for summary judgment based on these grounds, but he also dismissed the respondent"s motion, argued at the same time, for summary dismissal of these claims. Before us counsel for the appellants no longer contended that there should be summary judgement for them but insisted there were issues that should go to trial. The respondent in a cross-appeal argued that the motions judge should have granted its motion for summary dismissal of the appellants" action. [5] It must first be observed that the order of the learned motions judge is not very clear as to what he intended on this point. The order reads as follows:
[6] While, as may be noted, the first sentence of the order appears to grant the respondent"s applications for summary judgment in their entirety, including dismissal of all of the appellants" claims, the last sentence implies that the action is still alive. The appellants argue that it is clear from the reasons that the motions judge was not dismissing their action but only refusing to give them summary judgment. This appears to be the case, although it was incumbent on the appellants to bring a motion under then Rule 337(5) if they thought the order did not accord with the reasons. [7] We accept for the purposes of this appeal that the motions judge did not intend to dismiss that portion of the action not dependent on Havana House"s registered Canadian trade marks. We are of the view, however, that the motions judge should have done so given the lack of evidence before him to show that there was a genuine issue for trial. [8] In concluding his review of the evidence on this aspect of the case the learned motions judge stated:
However, by sub-rule 432.2(1) the appellants, as responding parties to this motion for summary judgment, were obliged to "set out, in affidavit material on other evidence, specific facts showing that there is a genuine issue for trial." If the judge was satisfied that they had not done so, he was by sub-rule 432.3(1) obliged to grant summary judgment in favour of the respondent. [9] When we consider the findings of fact which the judge did make, we conclude that he had found there to be no sufficient evidence to give rise to a triable issue. Specific examples follow. [10] First, of course, he had found the Canadian registered trade marks to be invalid1, and thus no cause of action of the appellants could be based on them. He found that all the trade marks employed on the cigars indicated the manufacturers as the source, not Havana House2. In his opinion the appellants" witness had admitted that the cigars sold by the respondent came from the Cuban sources represented by Cubatabaco and Habanos S.A.3 which is, of course, exactly what the trade marks as displayed would represent to the respondent"s customers. The motions judge found no evidence that four boxes of cigars sold by the respondent, and of which the appellants complained, bore the unregistered H. UPMANN HABANA mark belonging to Cubatabaco.4 The judge did not believe the evidence proved that the respondent"s quality control was inadequate.5 There was "no evidence that the [respondent] ... engaged in poor quality control methods."6 Further, there was "no evidence that there had been a "depreciation of goodwill" as a result of the [respondent"s] actions as that term is defined under section 22 of the Trade-marks Act .7 Moreover, there was insufficient evidence that the cigars they sold were not bought by the respondent from legitimate outlets.8 These findings belie a proveable claim for the sale of "counterfeit cigars", the false representation by the respondent of Havana House as the source of the respondent"s cigars, or activities which would depreciate the good will of the appellants. [11] While the appellants have sought to find in the record some fragments of evidence that could have supported their case and which the motions judge did not specifically mention, we can see no reviewable error in his findings of fact. Those findings demonstrate that there should have been no summary judgments in favour of the appellants; but they also demonstrate that the appellants were not able to provide sufficient "specific facts showing that there is a genuine issue for trial" as required by Rule 432.2(1). [12] If the summary judgment rules are to have any utility then they should be used in circumstances such as these to avoid the delay and expense of a trial based on insubstantial evidence. [13] We will therefore allow the cross-appeal of the respondent in file A-349-98, and dismiss the appellants" action. [14] The respondent will be entitled to costs in the court below and to one set of costs in this Court. "B.L. Strayer" J.A. FEDERAL COURT OF CANADA Names of Counsel and Solicitors of Record
DOCKETS: A-349-98 and A-350-98
SKYWAY CIGAR STORE DATE OF HEARING: MONDAY-TUESDAY, NOVEMBER 8-9, 1999 PLACE OF HEARING: TORONTO, ONTARIO
Delivered at Toronto, Ontario on Tuesday, November 9, 1999 APPEARANCES: Mr. Roger T. Hughes, Q.C. Mr. Kenneth D. McKay
Mr. Alnaz I. Jiwa
Alnaz I. Jiwa
Suite 54 Willowdale, Ontario M2J 1L8
FEDERAL COURT OF APPEAL Date: 19991109 Docket: A-349-98 A-350-98
BETWEEN:
Appellants
SKYWAY CIGAR STORE Respondent
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