Levi Strauss & Co. v. Roadrunner Apparel Inc.
A-240-97
Létourneau J.A.
27/10/97
7 pp.
Appeal from order refusing to strike out paragraphs from statement of defence relating to appellants' trade mark rights in Canada to use a double arcuate design applied to the hip pocket of jeans-type garments-Paragraph 18 alleging plaintiffs acquiesced in such use of designs by others-Appellants submitting as defence of acquiescence personal to defendant, defendant cannot rely on plaintiff's acquiescence to use of trade mark by third parties-Contending that plaintiff's behaviour toward other parties irrelevant to determination of issue between plaintiff, specific defendant not claiming acquiescence in relation to itself-Appellants referring to American authorities, but no Canadian precedents-Unnecessary to decide point-Reference to acquiescence by appellants to use of trade mark in market place read, understood in context-Paragraphs 16, 17 of statement of defence, specifically alleging double design applied to rear pockets of jeans losing distinctiveness claimed because widely used by several companies, still in common use in Canada-Owner of trade mark may by personal conduct or own behaviour, including acquiescence to use of trade mark by others irremediably compromise distinctiveness of mark, validity of registration-Proper for defendant in infringement lawsuit to allege such fact in statement of defence provided supported by factual base-Motions Judge properly found respondent providing statements of fact supporting allegation-Paragraph 21 alleging lawsuit frivolous and vexatious-Respondent alleging appellants, under guise of valid enforcement of trade mark, in fact abusing Court's process-Seeking to establish abuse of process in appellants' action or course of conduct designed to harass users of trade mark, avoid by all means determination of validity of registration-Motive relevant in context of abuse of Court's process-Abuse of process developed both in substantive, procedural law-Actionable tort-Abuser must have used legal process for collateral, extraneous, ulterior, improper or illicit purpose-No abuse when litigant employs regular legal process to proper conclusion, even with bad intentions-Also invoked as procedural defence, especially in criminal law, but not limited thereto-Nothing preventing application to infringement lawsuit-Abuse of process request to Court to vindicate process, protect it from abuse by litigants-Litigant should not be denied right to raise issue in statement of defence, when factual basis to support claim-Factual basis supporting allegation herein-Difficulties in proving allegation not ground for denying defendant such possibility.