Digests

Rolls-Royce plc v. Fitzwilliam

T-2221-98

2002 FCT 598, O'Keefe J.

24/5/02

36 pp.

Application for summary judgment under Federal Court Rules, 1998, r. 213 in action alleging trade-mark infringement of variety of trade-marks owned by, registered to plaintiffs-- Plaintiffs, Rolls-Royce plc, Rolls-Royce & Bentley Motor Cars Limited, Bentley Motors Limited, 3 corporations organized under laws of England--Plaintiffs bringing motion for summary judgment to enjoin 3 defendant Canadian corporations, defendant Ian D. Fitzwilliam from infringing trade-marks owned by them--Under r. 120, corporate defendants must be represented by counsel unless leave of court granted to allow individual, not lawyer, to represent corporations--Mr. Fitzwilliam has not sought, received leave--Court prepared to proceed with motion for summary judgment as though Mr. Fitzwilliam granted leave to represent defendant corporations, but not granting leave to Mr. Fitzwilliam to represent defendant corporations in subsequent matter before Courts, including appeals of decision--R. 147 allowing Court to consider documents to be validly served if satisfied document came to notice of person to be served--As Court satisfied Mr. Fitzwilliam controlling mind of defendant corporations, service on him sufficient to constitute service on defendant corporations--Plaintiffs lawful owners of following trade-marks in Canada: "Rolls-Royce" registration No. UCA05921, "Rolls-Royce Monogram" registration No. UCA07323, "Rolls-Royce Badge" registration No. TMA217,812, "Phantom" registration No. UCA11503, "Car Grill" Design registration No. TMA235,698, "Corniche" registration No. TMA217,212, "Silver Cloud" registration No. TMA233,390 and "Bentley" registration No. TMA163,409-- "Rolls-Royce" famous trade-mark with exclusive rights in Canada owned by Rolls-Royce plc--Defendants have not succeeded in demonstrating any of plaintiffs' trade-marks invalid under Trade-marks Act, s. 19--No reason why plaintiffs' trade-marks not valid in Canada--Appropriate considerations in motion for summary judgment set out by Tremblay-Lamer J. in Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.)--No genuine issue for trial--Defendants have not established serious issue to be tried in respect of validity of trade-mark registrations, of providing defendants with rights to use trade-marks-- Defendants' case so doubtful that not deserving consideration by trier of fact at future trial--Relevant facts to determine proceeding before Court in motion for summary judgment-- Appropriate situation to be resolved on motion for summary judgment--Defendants have infringed plaintiffs' trade-marks in manner alleged by plaintiffs in submissions--By so doing, defendants have interfered with plaintiffs' exclusive rights conferred by registration of trade-marks under s. 19, infringing plaintiffs' trade-marks contrary to Trade-marks Act, s. 20--Have made false, misleading statements contrary to s. 7(a), directed public attention to businesses in such way as to likely cause confusion in Canada with businesses of plaintiffs contrary to Trade-marks Act, s. 7(b)--Motion for summary judgment allowed--Federal Court Rules, 1998, SOR/98-106, rr. 120, 147, 213--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7, 19 (as am. by S.C. 1993, c. 15, s. 60), 20 (as am. by S.C. 1994, c. 47, s. 196).