Intel Corp. v. 3395383 Canada Inc.

Intel Corp. v. 3395383 Canada Inc.

Questions that seek information beyond the witness's knowledge or that amount to a fishing expedition or intrusion into unrelated third-party records are not discoverable; a defendant is not obliged to obtain information from persons who are not its present or former officers/agents; questions about damages/profits are irrelevant at the liability stage after severance and need not be answered; witnesses may not be asked to disclose counsel's trial strategy; however an undertaking to disclose any discovered attempts to purchase in Canada under the mark is a proper, non-privileged factual obligation.

Citation
2003 FC 898
Parties
Plaintiff (defendant by Counterclaim): Intel Corporation; Defendant (plaintiff by Counterclaim): 3395383 Canada Inc.; Defendant (plaintiff by Counterclaim): 9047-9320 Quebec Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
18 July 2003
Procedural Posture
Trade Mark Infringement; Trade Mark Expungement Counterclaim / Discovery Motions (motions Addressing Outstanding Examination for Discovery Questions)
Outcome
Motion partially granted and partially dismissed. Specific discovery questions refused; certain undertakings and limited disclosures ordered; costs allocated.
Legal Topics
Trade Mark Infringement, Expungement for Non Use/abandonment, Scope of Discovery, Actual Confusion, Bifurcation of Issues
Source Language
English
Intellectual Property Trade Mark Law Civil Procedure Evidence and Discovery Trade Mark Infringement Expungement for Non Use/abandonment Scope of Discovery Actual Confusion +1 more

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Parties

Intel Corporation

Plaintiff (defendant by Counterclaim)

3395383 Canada Inc.

Defendant (plaintiff by Counterclaim)

9047-9320 Quebec Inc.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Trade Mark Infringement; Trade Mark Expungement Counterclaim / Discovery Motions (motions Addressing Outstanding Examination for Discovery Questions)

Legal Issues

  1. 1 Scope and limits of examination for discovery (prevention of fishing expeditions)
  2. 2 Obligation to obtain information from third parties or related co-defendants
  3. 3 Relevance of damages/profits questions at liability stage after severance

Ratio Decidendi

Questions that seek information beyond the witness's knowledge or that amount to a fishing expedition or intrusion into unrelated third-party records are not discoverable; a defendant is not obliged to obtain information from persons who are not its present or former officers/agents; questions about damages/profits are irrelevant at the liability stage after severance and need not be answered; witnesses may not be asked to disclose counsel's trial strategy; however an undertaking to disclose any discovered attempts to purchase in Canada under the mark is a proper, non-privileged factual obligation.

Court Disposition

Motion partially granted and partially dismissed. Specific discovery questions refused; certain undertakings and limited disclosures ordered; costs allocated.

Orders

  • Questions 242 and 245 (requests to inquire of Mr. Kotler and identify subcontractors used by co-defendant 9047-9320 Quebec Inc.) are not to be answered
  • Remaining questions in category (a) relating to identification of suppliers, subcontractors and customers and questions in category (b) relating to electronic communications are not to be answered (refused as fishing expedition)