T-892-88
Polo Ralph Lauren Corporation, Modes Alto-
Regal Inc. (Plaintiffs)
v.
Evan Cato, J.S. Fashions, O.P. Jain, Kevdex
Enterprise, Peter Scott, Charles Attwal, Jaskinder
Attwal, Jujhar Attwal and Sohun Attwal carrying
on business as Attwal Trading Co., Nasinder
Anand, Jagir Singh, Balbir-Singh Karir carrying
on business as Kentex Manufacturing Co., Ralph
Berdugo, Harpal Kanda, Daljeet Dakhu, Prakash
Mittal, Bob Da Sousa, Sam Sood, Alum Sood,
Bobby Kamel, Yvon Robillard, Janet Mrenica,
Arthur Ashby carrying on business as A-Jay
Enterprises, Walter Chiu, Nigel Gayme, Michael
Lee, Ventura Pangilinan carrying on business as
Philtex, Gina Foliero, Daniel Nemiroff, Dawyne
Bacchus, Biell Manoda, Jay Patal, Jason Taka-
robe, Michael Wing, Michael Brown, Jason
Potassh, Mandy Yu, Alyssa Black, Deborah John-
son, John Buckley, Steve Hirsch, Jeff Baird,
Suman Chopra, William Kaminski, Renaud
Lafrance, Universal Smoke Shop Ltd., Margarita
Tonado, The Red Apple Unisex Boutique Inc.,
Leo Fasciani, David Thayer, John Taylor, Paul
Rosgen, Steve Ashby, Tom Ashby, Kumarasamy
Gnanasundaram, Sandra Bridgpall, Philip Tishler
and John Doe and Jane Doe and Other Persons
Unknown to the Plaintiffs Who Offer for Sale,
Sell, Import, Manufacture, Advertise, or Deal in
Counterfeit Polo Ralph Lauren Apparel (Defend-
ants)
T-997-88
Hugo Boss A.G., Siga Designs International Inc.
(Plaintiffs)
v.
Sudsy's Enterprises Inc. carrying on business as
Printex-Cap King, "Robert Da Sousa", "John
Barwell", "Paul", "Jason", Nasinder Anand, Bal-
bir-Singh Karir carrying on business as Kentex
Manufacturing Co., Prakash Mittal, Sam Sood,
Alum Sood, Kevin Flaconer, Andrew Malcolm, J.
Ram, Avil Agarwal, Arthur Ashby carrying on
business as A-Jay Enterprises, Walter Chiu, Nigel
Gayme, Scott Shea, Vejee Group Limited, Ven-
tura Pangilinan carrying on business as Philtex,
Clare Robertson, Daniel Nemiroff, Pat Taylor,
Dawyne Bacchus, Richard Fawcett, Jay Patal
carrying on business as Maple-T-Luxe, Mandy
Yu, Tina Steinberg, Jason Takarobe, Jason
Potassh, Michael Brown, Michael Wing, Richard
Chai, Audrey Tencer, Bruce Lowther, Sandra
Bradshaw, Frank Lee, Michael Schwartzman,
Deborah Johnson, Alyssa Black, Devon Bryer,
Jeff Baird, John Buckley, Steve Hirsch, Joe Dae,
Suman Shopra, William Kaminski, Christine
Leclerc doing business as Neon-Mode, Renaud
Lafrance, Sam Kadian, Universal Smoke Shop
Ltd., Margarita Tonado, Carmelita Corks,
Kumarasamy Gnanasundaram carrying on busi
ness as Anusha Screen Printing, Steve Ashby
carrying on business as A-Jay Enterprises, Tom
Ashby, David Thayer, John Taylor, Paul Rosgen,
David James Cook, Azim Jiwani carrying on busi
ness as Bargain World and John Doe and Jane
Doe and Other Persons Unknown to the Plaintiffs
Who Offer for Sale, Sell, Import, Manufacture,
Advertise, or Deal in Counterfeit Hugo Boss
Apparel (Defendants)
INDEXED AS: POLO RALPH LAUREN CORP. V. CATO (T.D.)
Trial Division, Reed J.—Toronto, June 6; Ottawa,
June 25, 1990.
Practice — Contempt of court — Service — Breach of five
Court orders, including Anton Pillar orders, prohibiting distri
bution and selling of counterfeit garments carrying trade
marks "Hugo Boss" or "Polo Ralph Lauren" — Service of
show cause order on defendant Arthur Ashby — Personal
service normally required — Could not be made as defendant
evaded service — Whether R. 355(4) power to authorize
another mode of service can be exercised only prior to hearing
of contempt charged or whether can also be exercised at
hearing — In instant case, leave would have been given for
other mode of service — No evidence of prejudice to defendant
as required to answer contempt charge for which service
allegedly not made at same time as four other contempt
charges for which show cause orders personally served and as
same facts underlie all five orders — Where no evidence of
prejudice, case not set aside for defective service — Persons
voluntarily appearing may not rely on defective service
Breach of spirit and principles of R. 2(2) (Rules intended to
render effective substantive law and to ensure it is carried out
and must be interpreted to facilitate rather than delay) if R.
355(4) not interpreted to allow authorization of service to take
place coincident upon hearing of contempt charged as well as
some time prior — Service of show cause order valid — Anton
Pillar orders — Service thereof — Defendant aware of orders
— Such knowledge sufficient to found contempt charge —
Personal service unnecessary — Conduct demonstrating bla
tant disregard for rights of others and for Court orders
Tom and Arthur Ashby each fined $6,000, with costs on
solicitor-client basis — Defendant given two weeks to adduce
evidence with respect to alleged breach of order for which
service of show cause order found valid — With respect to
order issued against sons, as Arthur Ashby not named and as
plaintiff failed to argue father aided and abetted breaches, not
in contempt in respect thereof.
Trade marks — Practice — Contempt of court — Service of
Anton Pillar and show cause orders — Where defendant well
aware of but unwilling to obey, Anton Pillar orders, knowl
edge sufficient to found contempt charges — Personal service
not necessary — Normally, under R. 355(4), personal service
necessary for show cause orders — Where defendant not
prejudiced and aware of circumstances through service of
other show cause orders, R. 355(4) may be interpreted as
allowing authorization of other mode of service at hearing of
contempt charge itself
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Federal Court Rules, C.R.C., c. 663, RR. 2(2), 355(4).
CASES JUDICIALLY CONSIDERED
APPLIED:
King v. Kokot (1980), 31 O.R. (2d) 461; 119 D.L.R. (3d)
154; 18 C.P.C. 269 (H.C.); Hope v. Hope (1854), 43
E.R. 534 (Ch.D.); Re Consiglio et al., [1971] 3 O.R. 798
(M.C.); Rupertsland Mtge. Invt. Ltd. v. City of Winnipeg
(1981), 23 C.P.C. 208 (Man. Co. Ct.); Apple Computer,
Inc. v. Minitronics of Canada Ltd., [1988] 2 F.C. 265;
(1988), 17 C.I.P.R. 308; 19 C.P.R. (3d) 15; 17 F.T.R. 37
(T.D.); Di Giacomo v. Di Giacomo Canada Inc. (1988),
20 C.P.R. (3d) 251 (Ont. H.C.).
REFERRED TO:
Beloit Can. LteelLtd. v. Valmet Oy (1988), 18 C.I.P.R. 1;
20 C.P.R. (3d) 1; 15 F.T.R. 240; 82 N.R. 235 (F.C.A.);
Baxter Travenol Laboratories of Canada Ltd. et al. v.
Cutter (Canada), Ltd., [1983] 2 S.C.R. 388; (1983), 2
D.L.R. (4th) 621; 1 C.I.P.R. 46; 36 C.RC. 305; 75
C.P.R. (2d) 1; 50 N.R. 1; Re Avery, [1952] O.R. 192;
[1952] 2 D.L.R. 413 (C.A.); Seaward v. Paterson,
[1897] 1 Ch. 545 (C.A.); T Poje v. A. G. for British
Columbia, [1953] 1 S.C.R. 516; 2 D.L.R. 785; (1953),
105 C.C.C. 311; 17 C.R. 176; Re Gaglardi (1960), 27
D.L.R. (2d) 281; 34 W.W.R. 193 (B.C.C.A.); Profekta
International Inc. v. Pearl Video Ltd. (1987), 16 C.I.P.R.
193; 16 C.P.R. (3d) 97; 13 F.T.R. 170 (F.C.T.D.); Hugo
Boss v. Brunswick (T-1436-87, Jerome A.C.J., order
dated 14/9/87, F.C.T.D., not reported); Guccio Gucci v.
Cebuchier (T-408-88, Jerome A.C.J., order dated
15/1/90, F.C.T.D., not yet reported); Montres Rolex S.A.
et al. v. Herson et al. (1987), 15 C.P.R. (3d) 368; 12
F.T.R. 70 (F.C.T.D.); Guccio Gucci S.p.A. v. Silvert
(1988), 18 C.I.P.R. 274; 19 C.P.R. (3d) 256 (F.C.T.D.).
AUTHORS CITED
Louisell, David W. and Hazard, Geoffrey C. Cases and
Materials on Pleading and Procedure [S.1.: s.n.: s.d.].
COUNSEL:
Christopher J. Pibus for plaintiffs.
D. Kevin Haxell for defendant Arthur Ashby.
SOLICITORS:
Gowling, Strathy & Henderson, Toronto, for
plaintiffs.
D. Kevin Haxell, Toronto, for defendant
Arthur Ashby.
The following are the reasons for order ren
dered in English by
REED J.: Arthur Ashby and Tom Ashby were
ordered to appear before the Court to hear proof
of certain acts of contempt with which they are
charged and to urge any grounds of defence they
might have. The acts of contempt relate to
breaches of several orders of this Court. Those
orders, amongst other things, prohibit the distribu
tion and selling of counterfeit garments carrying
the trade marks "Hugo Boss" or "Polo Ralph
Lauren".
At the close of the hearing of this application,
counsel for Tom Ashby conceded that his client
was in contempt of the following orders of the
Associate Chief Justice: one dated January 8, 1990
on file T-997-88; a second dated January 8, 1990
on file T-892-88; a third dated October 30, 1989
on file T-997-88; and, a fourth dated October 30,
1989 on file T-892-88. The T-997-88 file relates to
infringement of the "Hugo Boss" trade mark. The
T-892-88 file relates to the infringement of the
"Polo Ralph Lauren" marks.
While it is conceded that Tom Ashby is guilty of
contempt of the four orders in question, a number
of defences were raised with respect to the position
of Arthur Ashby.
Arthur Ashby is charged with breach of the
same four orders as Tom Ashby. The breach of an
additional order is alleged to have been committed
by Arthur Ashby. Of the four orders, referred to
above, the two dated October 30, 1989 are Anton
Pillar orders. They were issued against a number
of defendants, one of whom is Arthur Ashby
carrying on business as A-Jay Enterprises and
John Doe and Jane Doe and other persons,
unknown to the plaintiffs, who offer for sale, sell,
import, manufacture, advertise or deal in counter
feit Polo Ralph Lauren or Hugo Boss apparel. The
Anton Pillar orders authorize the solicitors for the
plaintiffs to seize any counterfeit garments carry
ing these trade marks, which they find, and deliver
them to the Court.' At the same time, as is usual
in this type of order, the person or persons from
whom the goods are seized is served with a notice
of motion setting a date and time at which he or
she can dispute the validity of that seizure. The
Anton Pillar orders also require persons in posses
sion of such counterfeit garments to allow the
' The express terms of the Polo Ralph Lauren order provides,
in part, as follows:
5. The Respondents, ... shall immediately deliver up to the
Plaintiffs' solicitors, or their agents, for delivery into the
interim custody of any Registrar of this Court, following the
taking of any copies required, all of the following articles, data
and documents within their possession, custody or control:
plaintiffs' solicitors to search the premises where
the garments are found and to disclose to the
solicitors the source from which the garments were
acquired.
The two orders of January 8, 1990 are interlocu
tory injunction orders. They order certain defend
ants including Tom Ashby, not to sell, offer for
(Continued from previous page)
(i) all clothing and related items bearing the POLO Trade
Marks or any trade mark confusingly similar therewith; and
(ii) any documents or data which appear to relate to the
purchase, acquisition, shipment, importation, sale, distribu
tion, manufacture or printing of clothing bearing the POLO
Trade Marks.
. . .
6. The Respondents, and any of them, shall:
(i) permit the Plaintiffs' solicitors, their agents, and such
persons as may be authorized by such solicitors (being not
more than four in number) to forthwith enter and search
their stands, displays and premises, including any vehicles,
carts and wagons used in their business, on any day at any
time between 6:00 a.m. and 12:00 a.m. (midnight) for the
purpose of searching for, removing and delivering into the
interim custody of this Court, subject to further directions,
the articles and documents referred to in paragraph 5 herein.
(ii) open and make available to the Plaintiffs' solicitors, or
their agents, for inspection any case, container, cabinet,
drawer or storage means within their possession, custody or
control and open any locked door which the person serving
this Order reasonably believes or suspects may contain, or
behind which may be, articles or documents which he is
unable to inspect by reason of the said door, cabinet, drawer,
case, container or storage means being locked or otherwise
unavailable for inspection; and deliver up any key or other
thing necessary to open such door, cabinet, drawer, case
container or storage means.
(iii) disclose to the persons serving this Order the follow
ing matters:
(a) the whereabouts of all articles or documents referred
to in paragraph 5 herein that are in their possession,
custody or control, whether at their stands, displays, prem
ises, vehicles or elsewhere or being held on their behalf by
any other person or in storage or in the course of transit or
being delivered either to or from them to or from any other
person;
(b) their names and addresses, and the names and
addresses of all persons from whom they (and such other
persons served with this Order) obtained or are obtaining,
and to whom they have supplied or are supplying, the said
articles.
sale, distribute, transfer or otherwise deal with
clothing carrying the "Polo Ralph Lauren" and
"Hugo Boss" marks.
The additional order, a breach of which is
charged against Arthur Ashby, is an interlocutory
injunction order of July 26, 1988. It orders certain
named defendants, one of which is Arthur Ashby
(carrying on business as A-Jay Enterprises), not to
sell, offer for sale, distribute, transfer or otherwise
deal with clothing carrying the "Hugo Boss" trade
mark.
Facts
It is necessary, first of all, to set the orders in
the context of the overall litigation which the
plaintiffs have been carrying on in this Court. In
May and June of 1988, statements of claim were
filed by the plaintiffs alleging infringement of their
respective marks by numerous defendants both
named and unnamed. Anton Pillar orders were
issued against persons both named and unnamed.
These Anton Pillar orders of May 16, 1988 (Polo
Ralph Lauren) and June 1, 1988 (Hugo Boss)
were extended or renewed from time to time. One
such renewal occurred on October 30, 1989.
On June 13, 1988 interlocutory injunction
orders issued, on consent, against certain named
defendants prohibiting them from selling, transfer
ring, or otherwise dealing with wearing apparel
carrying the "Hugo Boss" ("Boss") or "Polo
Ralph Lauren" ("Polo") marks. On July 12, 1988
Arthur Ashby, carrying on business as A-Jay
Enterprises, was added as a defendant against
whom the interlocutory injunction order in the
Polo Ralph Lauren case applied. On July 26, 1988
Arthur Ashby, carrying on business as A-Jay
Enterprises, was added as a defendant against
whom the interlocutory injunction order in the
Hugo Boss case applied. The interlocutory injunc
tion orders against Arthur Ashby, carrying on
business as A-Jay Enterprises, were served on
August 10, 1988 by leaving a copy with Arthur's
son Tom Ashby. These were left at a business
premise on Passmore Road in Scarborough.
As has been noted, on October 30, 1989, Anton
Pillar orders issued with respect to both marks
(these were renewals of the earlier Anton Pillar
orders). One of the named defendants therein was
Arthur Ashby carrying on business as A-Jay
Enterprises. Those orders, as is usual, also issued
against John Doe and Jane Doe and other
unnamed defendants.
In December 1989, solicitors for the plaintiffs
attended at a store on Yonge Street which had
counterfeit "Boss" and "Polo" shirts on display in
the window. The outside of the store carried no
trade name or marks of identification but inside
the store, the vendor's permit, which was affixed to
the wall, indicated that that permit had been
issued in the name of A-Jay Enterprises and
Arthur Ashby. Steve Ashby was in charge of the
store. The plaintiffs' solicitor served the Anton
Pillar orders of October 30, 1989 on Steve Ashby
and took away approximately 100-150 counterfeit
articles carrying the "Boss" and "Polo" marks
(sweatshirts and sweatpants). In answer to queries
concerning the source of these garments, Steve
Ashby informed the solicitors that they came from
his father, Arthur Ashby.
The plaintiffs' solicitor then attended at a
Winges Road address in Woodbridge, which
address had been on some of the boxes seized from
the Yonge Street store. They again saw counterfeit
garments. The Anton Pillar orders of October 30,
1989 were served on the person who appeared to
be in charge, Tom Ashby. Five counterfeit gar
ments were seized (two "Boss" and three "Polo").
Tom Ashby indicated that the source of the coun
terfeit garments was his father, Arthur Ashby.
Tom and Steve Ashby were then added as party
defendants to the statement of claim and inter-
locutory injunction orders similar to those which
had been issued against their father in July of
1988 were issued against them. These interlocuto
ry injunction orders were issued, as has been
noted, on January 8, 1990. They were served
personally on Tom Ashby at the Winges Road
premises on January 25, 1990. The process server
sought to serve both Tom and Steve Ashby but
was told he would be unable to serve Steve because
he was away at school in the United States. Arthur
Ashby agreed to accept service on behalf of his
son, Steve, and did so on January 29, 1990. Upon
receiving the documents from the process server,
Arthur ripped them up; in the presence of the
process server, and threw them in the wastebasket
stating that Steve was "never going to see these".
Two months later, on March 30, 1990, art inves
tigator employed by the plaintiffs attended at the
Winges Road store and saw some counterfeit
"Boss" and "Polo" sweatshirts displayed. He
bought two. The vendor was Tom Ashby. His
father, Arthur, was seated in a corner of the room
at the time, reading the newspaper. The investiga
tor engaged Tom in conversation and made enqui
ries about buying T-shirts carrying the same brand
names. He also enquired about buying T-shirts in
bulk for possible resale. Tom Ashby informed the
investigator that T-shirts would be arriving soon,
in anticipation of the warmer summer weather,
and that they could be bought in bulk. He also
indicated that bulk purchases would be available
at a lower price than a single garment purchase.
Tom Ashby added a cautionary note. With respect
to reselling the garments, he indicated that one
had to be careful because "they could take them
from you" if they find out.
The investigator left the Winges Road store
with his "Polo" and "Boss" sweatshirt purchases.
He returned a few minutes later with the plain
tiffs' solicitor. The solicitor proceeded to serve the
Anton Pillar orders of October 30, 1989, with a
view to taking away all the counterfeit garments
on the premises which carried the "Boss" and
"Polo" trade marks. The Anton Pillar documenta
tion was handed to Tom Ashby and he was asked
if he needed an explanation since he had been
through this before (i.e., the previous December at
the same Winges Road location). Arthur Ashby,
then, entered the discussion. He picked up the
documents from the counter and demanded an
explanation as to where the solicitor for the plain
tiffs got the authority to remove articles from the
store. An explanation was given. Arthur became
irate and profane. He would not let the solicitor
and the investigator remove the two boxes of coun
terfeit garments which they could see. He would
not let them search the store nor give them infor
mation concerning the source of the garments. He
"showed" them the door and threw the Anton
Pillar documents out the door after them, into a
puddle of water. The door was locked and the
lights turned off. The investigator went to the rear
of the store and saw Tom Ashby leaving, carrying
two large boxes. When Tom saw the investigator,
he returned to the store. The solicitor for the
plaintiffs picked the Anton Pillar documents out of
the puddle and took them back to his office.
Arthur Ashby—Defences
As noted, Arthur Ashby has been ordered to
show cause why he is not in contempt of the two
Anton Pillar orders of October 30, 1989 and the
two interlocutory injunction orders of January 8,
1990. The show cause orders respecting these
issued on April 9, 1990. Subsequently, an order
dated May 28, 1990, required him also to show
cause as to why he was not in contempt of the
interlocutory injunction order of July 26, 1988,
relating to the "Hugo Boss" counterfeit garments.
Counsel for Arthur Ashby argues that the
alleged contempt of the order of July 26, 1988
cannot be properly heard at this time because the
show cause order of May 28, 1990 was never
personally served on the defendant. After the
Associate Chief Justice issued the show cause
order on May 28, 1990, counsel for the plaintiffs
had a copy delivered to counsel for Arthur Ashby.
He was informed that counsel was not authorized
to accept service of that document. A process
server attempted, four times thereafter, to person
ally serve Mr. Ashby but was unsuccessful. The
documents were eventually left with Tom Ashby at
the business premises of A-Jay Enterprises.
Counsel for the defendant argues that Rule 355
[Federal Court Rules, C.R.C., c. 663] requires
personal service and since there was no personal
service of the show cause order of May 28, 1990,
the acts of contempt alleged in that order (relating
to the July 26, 1988 interlocutory injunction)
could not be proceeded with. He argues that the
contempt process is quasi-criminal and therefore
the procedural rules, especially those respecting
personal service, must be strictly obeyed. I agreed
to reserve judgment on this issue until the end of
the hearing. The fact situation which underlies the
contempt alleged concerning the July 26, 1988
order is identical to that which underlies the con
tempt alleged with respect to the other four orders.
In such circumstances, there can be no prejudice
visited upon the defendant, Arthur Ashby, as a
result of reserving a decision on the issue of service
until after the plaintiffs evidence is heard.
Counsel for Arthur Ashby argues that that
defendant cannot be held in breach of the injunc
tion orders of January 8, 1990 because he was not
named in them, nor did he sell the merchandise.
Counsel argues that Arthur Ashby cannot be held
in breach of the Anton Pillar orders of October 30,
1989 because he was never served with these
orders. This lack of service arises, it is argued,
because the documents were handed to Tom
Ashby and only one set of documents was served.
Service of May 28, 1990 Show Cause Order
With respect to the service of the May 28, 1990
show cause order alleging contempt of the July 26,
1988 interlocutory injunction order, Rule 355(4)
provides:
Rule 355... .
(4) No one may be condemned for contempt of court com
mitted out of the presence of the judge, unless he has been
served with a show cause order ordering him to appear before
the Court, on the day and at the hour fixed to hear proof of the
acts with which he is charged and to urge any grounds of
defence that he may have. The show cause order ... must be
served personally, unless for valid reasons another mode of
service is authorized. [Underlining added.]
There was no personal service of the show cause
order of May 28, 1990. An attempt was made to
serve Arthur Ashby's solicitor; that service was
refused. A process server tried on four occasions
subsequent thereto to serve Mr. Ashby but was
unsuccessful. Mr. Ashby was clearly evading ser
vice. The documents were finally left at Mr. Ash-
by's business premises with his son Tom. Mr.
Ashby suffers no prejudice by being expected to
answer the charge of contempt alleged with
respect to the July 26, 1988 order at the same time
as he is required to answer those alleged with
respect to the other four charges, for which show
cause orders have been personally served. The
same facts underlie all five orders.
Contempt charges are quasi-criminal. The
consequences are grave. An alleged contemptor
faces the possibility of incarceration. Therefore,
there is a requirement of strict compliance with
the applicable rules, see Beloit Can. Ltée/Ltd. v.
Valmet Oy (1988), 18 C.I.P.R. 1 (F.C.A.) at
pages 20 and 21. At the same time, the general
purpose of the Court's contempt power is to ensure
the smooth functioning of the judicial process.
(Baxter Travenol Laboratories of Canada Ltd. et
al. v. Cutter (Canada), Ltd., [1983] 2 S.C.R. 388.
In addition, Rule 2(2) of the Federal Court Rules
sets out principles which are to govern the inter
pretation of those Rules:
Rule 2. ...
(2) These Rules are intended to render effective the substan
tive law and to ensure that it is carried out; and they are to be
so interpreted and applied as to facilitate rather than to delay
or to end prematurely the normal advancement of cases.
[Underlining added.]
If the alleged breach of the July 26, 1988 order is
not dealt with as part of the present proceedings, it
will be necessary to hold a second hearing at which
time the identical evidence to that adduced before
me will be called. The only reason for such second
hearing would be the alleged defect in service on
Arthur Ashby who was present throughout the
hearing of all the relevant evidence which pertains
to the alleged breach of the July 26, 1988 order.
In this context the question that I must ask
myself is whether the authority given to a judge,
pursuant to Rule 355(4), to authorize "another
mode of service" (un autre mode de signification)
can only be exercised prior to the hearing of the
contempt charged or whether it can also be exer
cised coincident therewith.
There is no doubt that in the circumstances of
this case, had an application been made, prior to
the hearing, to authorize service by leaving the
documentation at the business premises of Arthur
Ashby, or by delivering such to his solicitor, that
application would have been granted. Also, it is
useful to quote from Louisell and Hazard in their
Cases and Materials on Pleadings and Procedure,
at page 409:
The spectre of the defendant locking himself in his house and
slinking and dodging when out in public places, all in an effort
(sometimes successful) to evade the actual touch of the process
server, seems too much for a civilized adult society to abide. It
appears never to have occurred to the courts to tell such a
defendant that he is personally served when summons is so
deposited that with any efforts but evasive ones he could receive
it. Why should the sovereign's command be so lightly treated?
Indeed, the jurisprudence, in related areas,
reveals that where there is no evidence of prejudice
to the respondent (defendant), a case will not be
set aside simply because the rules of service have
not been formally complied with. For example, see
King v. Kokot (1980), 31 O.R. (2d) 461 (H.C.).
Similarly persons who voluntarily appear are held
not entitled to rely on defective service. These
results are entirely consonant with the purpose for
which personal service is required. In Hope v.
Hope (1854), 43 E.R. 534 (Ch.D.) at pages 539
and 540, the underlying principle was expressed as
follows:
The object of all service is of course only to give notice to the
party on whom it is made, so that he may be made aware of
and may be able to resist that which is sought against him; and
when that has been substantially done, so that the Court may
feel perfectly confident that service has reached him, every
thing has been done that is required.
In later years, Hogg J.A. stated in Re Avery,
[1952] O.R. 192 (C.A.) at page 199:
Personal service has been said to be service made by delivering
the process into the defendant's hands or by seeing him and
bringing the process to his notice.
Modern cases stress that the question of whether
the purpose of giving notice to the person being
served has been achieved is the relevant question.
In Re Consiglio et al., [1971] 3 O.R. 798 (M.C.)
the process server left the document with a non-
party, and this subsequently came to the knowl
edge of the party to be served. In that case the
Court held that personal service was satisfied if it
appeared that the document came to the knowl
edge or into the possession of the person to be
served either directly or indirectly from a third
party. Then, in Rupertsland Mtge. Invt. Ltd. v.
City of Winnipeg (1981), 23 C.P.C. 208 (Man.
Co. Ct.), the wife of director was served and she
subsequently delivered the documents to her hus
band. It was held that personal service on the
husband was effected. The case stated that person
al service will be effected if it can be shown that
the person to be served actually received the docu
ment and was apprised of the contents whether
directly or through an intermediary. The case also
noted that the whole purpose of service is to
apprise and give a party notice of proceedings
intended to be taken against him, and if that
object has been satisfied, and the process has
actually reached the party, the precise manner in
which that has occurred should not be of concern.
It is clear, in this case, that the existence of the
contempt charged with respect to the breach of the
July 26, 1988 order must have been within the
knowledge of Arthur Ashby—how could his solici
tor have received instructions not to accept service
of the relevant documentation if this were not so?
As has been noted, the issue before me is the
proper interpretation of Rule 355(4) and particu
larly whether I may authorize, at this time, some
thing less than personal service as being sufficient.
I have come to the conclusion that Rule 355(4)
does not demand that the authorization of another
mode of service must occur before the hearing of
the contempt charged. To require such, in circum
stances such as exist in this case, would flout the
purposes set out in Rule 2(2). The consequences
would be that another hearing would have to be
held, with all the attendant costs for all parties and
for the Court, to address exactly the same evidence
which is already before the Court. In the circum
stances of this case, either notice to the solicitor or
the leaving of the documentation at Mr. Ashby's
business premises would constitute sufficient ser
vice had approval of such been obtained prior to
the hearing. I think it would be a breach of the
spirit and principles of Rule 2(2) were Rule 355(4)
not interpreted to allow authorization of such ser
vice to take place coincident upon the hearing of
the contempt charged as well as at some prior
time. Accordingly in my view, the defendant was
in this case properly served.
Mr. Ashby was in Court during the whole of the
proceedings of June 6, 1990 which dealt with the
contempts alleged to have arisen out of the events
of March 30, 1990 at the Winges Road premises
of A-Jay Enterprises. Arthur Ashby, offered no
evidence to explain or negate any of the evidence
adduced by the plaintiffs concerning the events of
March 30, 1990. That stance was taken in the
context of my reservation of a decision on the
appropriateness of the service of the May 28, 1990
order. Accordingly, the defendant's decision in
that regard cannot be taken as necessarily appli
cable to the alleged breach of the July 26, 1988
order. The defendant, Arthur Ashby, will be given
two weeks from the date of this order to indicate,
through his counsel, whether he wishes to adduce
evidence to answer that which is on the record
against him.
January 9, 1990—Interlocutory Injunction Orders
With respect to the alleged contempt of the two
January 9, 1990 orders, I have considered whether
Arthur Ashby was in contempt of those orders
even though he was not named in them. (He was
named in the style of cause although not in the
body of the order.) Arthur Ashby aided and abet
ted the breach by Tom Ashby. It is clear that the
father carried on business as A-Jay Enterprise. It
was the father who arranged for the supply of
counterfeit garments. The father was present
during the sale of the counterfeit sweatshirts on
March 30, 1990. He was present during the dis
cussion of future sales of counterfeit T-shirts and
of sales in bulk. He knew of the injunction orders
prohibiting the sale of that merchandise. He knew
that both he and his sons had been prohibited from
selling, offering for sale or otherwise distributing
such merchandise. Indeed, the evidence makes it
clear that he was the motivating force behind his
sons' activity.
It is clear that a person who is not named as a
party in an order can be guilty of contempt for
aiding and abetting a breach of that order. This
was firmly established in Seaward v. Paterson,
[1897] 1 Ch. 545 (C.A.). The Court of Appeal,
held, at page 554, that the jurisdiction the Court
has to make a contempt order against a third party
is based on the premise that:
He is bound, like other members of the public, not to interfere
with, and not to obstruct, the course of justice; and the case, if
any, made against him must be this—not that he has technical
ly infringed the injunction, which was not granted against him
in any sense of the word, but that he has been aiding and
abetting others in setting the Court at defiance, and deliberate
ly treating the order of the Court as unworthy of notice.
The Supreme Court of Canada in dicta, in T Poje
v. A. G. for British Columbia, [1953] 1 S.C.R.
516 at pages 518-519, adopted the rationale of the
Seaward decision. The Court referred to the dif
ference between actual breach of an injunction and
actions which amount to an obstruction of justice
in contempt cases. See also Baxter Travenol
Laboratories of Canada Ltd. et al. v. Cutter
(Canada), Ltd., [1983] 2 S.C.R. 388 for a case
where someone not actually bound by an injunc
tion was held to be guilty of contempt on the
ground that the actions of that person constituted
an interference with the orderly administration of
justice and the impairment of an order of the
Court. See also Re Gaglardi (1960), 27 D.L.R.
(2d) 281 (B.C.C.A.); Beloit Can. LteelLtd. v.
Valmet Oy (1988), 18 C.I.P.R. 1 (F.C.A.); Pro-
fekta International Inc. v. Pearl Video Ltd.
(1987), 16 C.I.P.R. 193 (F.C.T.D.).
At the same time, counsel did not raise an
argument before me that Arthur Ashby was guilty
of contempt of the January 8, 1990 orders by
virtue of activity which aided and abetted Tom
Ashby's breaches of those orders. It may be that
the wording of the show cause orders of April 9,
1990 does not bear this argument. In any event,
since that argument was not raised, I do not think
I should rely on it. In the absence of a finding that
Arthur Ashby is in contempt because he aided and
abetted his son, Tom, in the breaches of the rele
vant orders, I do not think Arthur Ashby can be
found in contempt of the orders of January 8,
1990. These were issued against his sons. Those
expressly naming the father had been issued, as
indicated, at an earlier period of time.
October 30, 1989—Anton Pillar Orders
With respect to the Anton Pillar orders of Octo-
ber 30, 1989, the defence of Arthur Ashby is an
artificial and unpersuasive one. This is a situation
in which knowledge of the order which is breached
is sufficient to found a charge of contempt. See,
for example, Apple Computer, Inc. v. Minitronics
of Canada Ltd., [1988] 2 F.C. 265 (T.D.); and Di
Giacomo v. Di Giacomo Canada Inc. (1988), 20
C.P.R. (3d) 251 (Ont. H.C.). Personal service by
handing a document to Arthur Ashby is not neces
sary. This is especially so when the circumstances
make it abundantly clear that his attitude was
such that he was not prepared, in any event, to
obey the orders of the Court. The handing over of
a second set of documents would have been futile.
Accordingly, Arthur Ashby is found to have been
in contempt of the two Anton Pillar orders of
October 30, 1989.
Penalty
I was referred to Hugo Boss v. Brunswick et al.
(T-1436-87, September 14, 1987) where a fine of
$1,000 plus costs of $1,500 was ordered to be paid.
I was referred to Guccio Gucci v. Cebuchier et al.
(T-408-88, January 15, 1990) where a fine of
$2,500 was imposed together with costs of $1,000.
I was referred to Montres Rolex S.A. et al. v.
Herson et al. (1987), 15 C.P.R. (3d) 368
(F.C.T.D.) where a fine of $2,000 was imposed
and Guccio Gucci S.p.A. v. Silvert (1988), 18
C.I.P.R. 274 (F.C.T.D.) where, on a second
offence, a fine of $5,000 plus $2,000 in costs was
imposed.
The offences in the present case demonstrate a
blatant disregard for the rights of others and for
the orders of this Court. The defendants would be
outraged if someone broke into their homes or
business premises and stole goods from them. Yet,
they have no compunction about stealing from
others. They may not equate their activity of
trading on the trade marks and trade names of
others as theft, but such it is. It is merely a
different kind of property right which is being
stolen. It is clear that Arthur Ashby carries a
heavier responsibility than his son and consequent
ly the penalties imposed, per offence, should be
proportionally higher. Counsel for the plaintiffs
suggested that penalties for each offence on each
file should be imposed separately. I agree that that
is appropriate.
ORDER
A fine of $1,500 for each offence committed by
Tom Ashby will be imposed (a total of $6,000).
Arthur Ashby will pay a fine of $3,000 for each
offence committed by him in breach of the orders
of October 30, 1989 (a total of $6,000 referrable
to the October 30, 1989 orders). In addition, the
defendants shall pay to the plaintiffs the costs of
this action on a solicitor-client basis fixed at
$2,400. Such shall be payable by the defendants in
such proportion as they agree between themselves
or on a fifty-fifty basis. These sums must be paid
within 30 days of the date of this order. If pay
ment of the fines and costs are not made within the
30 days, the plaintiffs or either of them may make
application to commit the defendants to jail: in the
case of Tom Ashby for not more than 30 days; in
the case for Arthur Ashby for no more than 60
days. The defendant, Arthur Ashby, through his
counsel, will notify the Court by letter addressed
and delivered to the District Administrator of the
Toronto Local Office as to whether he wishes to
adduce evidence to respond to the evidence which
has been presented with respect to the alleged
breach of the July 26, 1988 order. If such letter is
not received within two weeks of the date of this
order, then a judgment will be rendered on the
basis of the record as it stands. If Arthur Ashby
wishes to present evidence, an order will issue
setting a time, date and place for such hearing.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.