Michelin North America (Canada) Inc. v. 9130-4550 Québec Inc. (D.B.A. Disribution Nortop)

Michelin North America (Canada) Inc. v. 9130-4550 Québec Inc. (D.B.A. Disribution Nortop)

Questions and documents concerning the design, creation, testing and functionality of the accused tire treads are relevant to the central issue of infringement and validity because functionality may render the industrial designs unprotectable under s.5.1; the prothonotary erred in finding them irrelevant and the court may require the plaintiff to use best efforts to obtain information from related third-party affiliates and provide better answers on discovery; accordingly the prothonotary's relevant paragraphs of the order are set aside and remedial discovery is ordered.

Citation
2008 FC 1101
Parties
Plaintiff (defendant by Counterclaim): MICHELIN NORTH AMERICA (CANADA) INC.; Defendant (plaintiff by Counterclaim): 9130-4550 QUÉBEC INC. D.B.A. DISRIBUTION NORTOP; Defendant (plaintiff by Counterclaim): 9131-2173 QUÉBEC INC. D.B.A. RÉCHAPAGE NORTOP RICHMOND
Court
Federal Court
Jurisdiction
Canada
Judgment Date
2 October 2008
Procedural Posture
Industrial Design Infringement (intellectual Property) / Appeal of Prothonotary's Discovery Order (discovery Motion Appeal)
Outcome
Appeal allowed; prothonotary's order set aside in part and directed remedial discovery
Legal Topics
Discovery Relevance, Third Party Affiliates and Obligations to Inform Oneself, Industrial Design Validity, Functionality Exclusion (s.5.1), Examination for Discovery
Source Language
English
Intellectual Property Industrial Design Civil Procedure Commercial Litigation Discovery Relevance Third Party Affiliates and Obligations to Inform Oneself Industrial Design Validity Functionality Exclusion (s.5.1) +1 more

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Parties

MICHELIN NORTH AMERICA (CANADA) INC.

Plaintiff (defendant by Counterclaim)

9130-4550 QUÉBEC INC. D.B.A. DISRIBUTION NORTOP

Defendant (plaintiff by Counterclaim)

9131-2173 QUÉBEC INC. D.B.A. RÉCHAPAGE NORTOP RICHMOND

Defendant (plaintiff by Counterclaim)

Procedural Posture

Industrial Design Infringement (intellectual Property) / Appeal of Prothonotary's Discovery Order (discovery Motion Appeal)

Legal Issues

  1. 1 Whether discovery questions concerning design, creation, testing and functionality of accused tires are relevant to industrial design validity and infringement
  2. 2 Whether plaintiff must use best efforts to obtain information from third-party/affiliate entities and provide answers on discovery
  3. 3 Whether the prothonotary erred in refusing to compel further answers and document production

Ratio Decidendi

Questions and documents concerning the design, creation, testing and functionality of the accused tire treads are relevant to the central issue of infringement and validity because functionality may render the industrial designs unprotectable under s.5.1; the prothonotary erred in finding them irrelevant and the court may require the plaintiff to use best efforts to obtain information from related third-party affiliates and provide better answers on discovery; accordingly the prothonotary's relevant paragraphs of the order are set aside and remedial discovery is ordered.

Court Disposition

Appeal allowed; prothonotary's order set aside in part and directed remedial discovery

Orders

  • Paragraph 2 of Prothonotary Morneau's order dated August 1, 2008 is set aside; plaintiff shall within 15 days provide answers or better answers to questions addressing the utility and functionality of the four industrial designs including creation, testing and development information.
  • Paragraph 3 of Prothonotary Morneau's order dated August 1, 2008 is set aside.