Benisti Import-Export Inc. v. Modes Txt Carbon Inc.

Benisti Import-Export Inc. v. Modes Txt Carbon Inc.

Paragraphs 15 and 16 were struck because they re-litigated an issue previously decided by Prothonotary Morneau regarding the Federal Court's jurisdiction under s.7(a) of the Trade Marks Act as it relates to industrial designs; the prior decision became final in the absence of an appeal and therefore gives rise to issue estoppel; the repeated pleadings were scandalous, frivolous and an abuse of process, justifying striking and awarding solicitor-client costs of $2,500 and granting the Defendant 30 days to file its reply.

Citation
2002 FCT 810
Parties
Plaintiff (defendant by Counterclaim): BENISTI IMPORT-EXPORT INC.; Defendant (plaintiff by Counterclaim): MODES TXT CARBON INC.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
23 July 2002
Procedural Posture
Industrial Design Infringement; Counterclaim Under Trade Marks Act S.7(a) / Motion to Strike Pleadings (rule 221) / Interlocutory Application
Outcome
Motion granted in part; paragraphs 15 and 16 struck
Legal Topics
Industrial Design, Trade Marks Act S.7(a), Issue Estoppel, Striking Pleadings, Costs (solicitor Client)
Source Language
English
Intellectual Property Constitutional Law Civil Procedure Industrial Design Trade Marks Act S.7(a) Issue Estoppel Striking Pleadings Costs (solicitor Client)

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Parties

BENISTI IMPORT-EXPORT INC.

Plaintiff (defendant by Counterclaim)

MODES TXT CARBON INC.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Industrial Design Infringement; Counterclaim Under Trade Marks Act S.7(a) / Motion to Strike Pleadings (rule 221) / Interlocutory Application

Legal Issues

  1. 1 Whether the Federal Court has jurisdiction to entertain a cause of action under s.7(a) of the Trade Marks Act as it relates to industrial designs
  2. 2 Whether the prior Order of Prothonotary Morneau operates as res judicata/issue estoppel preventing re-litigation of jurisdiction
  3. 3 Whether paragraphs 15 and 16 disclose a new or permissible defence or are scandalous/frivolous and should be struck

Ratio Decidendi

Paragraphs 15 and 16 were struck because they re-litigated an issue previously decided by Prothonotary Morneau regarding the Federal Court's jurisdiction under s.7(a) of the Trade Marks Act as it relates to industrial designs; the prior decision became final in the absence of an appeal and therefore gives rise to issue estoppel; the repeated pleadings were scandalous, frivolous and an abuse of process, justifying striking and awarding solicitor-client costs of $2,500 and granting the Defendant 30 days to file its reply.

Court Disposition

Motion granted in part; paragraphs 15 and 16 struck

Orders

  • Paragraphs 15 and 16 of the Plaintiff's Reply to the Counterclaim are struck pursuant to Rule 221
  • Defendant is allowed 30 days from the date of the Order to file its Reply to the Defence to the Counterclaim