A-398-74
Liberty Ornamental Iron Limited (Appellant)
v.
B. Fertleman & Sons Limited (Respondent)
Court of Appeal, Jackett C.J., Pratte and Urie
JJ.—Ottawa, August 6, 1976.
Practice—Application in writing for judgment under Rule
324—Respondent's application for injunction against infringe
ment of industrial design granted—Injunction set aside on
appeal and appellant granted leave to prepare draft judgment
under Rule 324 pursuant to Rule 337—Proposed consent
order and judgment wrongly dated and inapt Application
dismissed with leave to reapply—Federal Court Rules 324 and
337.
Respondent launched infringement action in respect of an
industrial design registration and applied for an injunction
restraining appellant from manufacturing or selling a similar
product or using respondent's catalogue for sale purposes. The
injunction was granted but was set aside on appeal on grounds
that it was too widely worded and that no basis for the
injunction was shown. Appellant was allowed to prepare a draft
judgment pursuant to Rule 337 and apply for judgment under
Rule 324.
Held, the application is dismissed with leave to reapply. The
proposed consent order is framed so as to appear to have been
made on the day when the appeal was heard and the Court's
conclusions were expressed. Under Rule 337 there is no judg
ment until it has been signed by the presiding judge and there is
no authority for making such a judgment retroactive to the day
when the Court's conclusions were expressed. Furthermore the
judgment is not apt to implement the Court's conclusions.
APPLICATION in writing under Rule 324.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Rogers, Bereskin & Parr, Toronto, for
respondent.
The following are the reasons for judgment
rendered in English by
JACKETT C.J.: This is an application in writing
(Rule 324) for judgment.
The respondent launched an infringement action
in respect of an industrial design registration in the
Trial Division on October 9, 1974; and, by notice
of motion dated October 11, 1974, applied for
(a) An injunction restraining the Defendant by itself, its
servants, agents, workmen and employees from manufactur
ing or selling wall units in Canada of similar appearance to
those illustrated in Industrial Design Registration Nos.
38111, 38112, 38113 and 38114 of the Plaintiff, including
colourable imitations thereof, and
(b) An injunction restraining the Defendant by itself, its
servants, agents, workmen and employees from using any
catalogue of the Plaintiff for the purpose of selling wall units
not of the Plaintiff's manufacture.
On December 9, 1974, the Trial Division, Gibson
J. presiding, delivered a judgment * reading, in
part:
UPON THE APPLICATION on behalf of the Plaintiff for:
(a) An injunction restraining the Defendant by itself, its
servants, agents, workmen, and employees from manufacturing
or selling wall units in Canada of similar appearance to those
illustrated in Industrial Design Registration Nos. 38111,
38112, 38113, and 38114 of the Plaintiff, including colourable
imitations thereof, and
(b) An injunction restraining the Defendant by itself, its
servants, agents, workmen, and employees from using any
catalogue of the Plaintiff for the purpose of selling wall units
not of the Plaintiff's manufacture.
IT IS ORDERED that the Plaintiff has:
1. Established a prima facie case and
2. Established irreparable harm, and
3. On the, premise that the defendant has an arguable case
based on improper registration, the balance of convenience is in
favour of the plaintiff. (The plaintiff has filed an undertaking
as to damages dated 11th November, 1974.) (See Grafton v.
Watson (1884) 51 L.T.R. 141 at 143).
Order therefore to go granting an injunction in the terms of
Paragraphs (a) and (b) of the Notice of Motion dated 11th
October, 1974 effective the date the plaintiff files a bond in the
sum of $25,000.00 for damages, to the Court. Costs of this
application to the plaintiff in the cause.
In this Court, on February 4, 1975, at the
conclusion of the hearing of an appeal from that
judgment, the following reasons ** were given:
* [Reasons for trial judgment (T-3589-74) not circulated—
Ed.]
** [Oral reasons for judgment (A-398-74) not circulated—
Ed.]
While no one of us is satisfied that he would, if he had been
in the position of the learned Trial Judge, have granted an
injunction in respect of the registered designs, we have not been
satisfied that the learned Trial Judge erred in principle in the
exercise of his discretion to grant such an injunction. There was
evidence upon which he was entitled to find facts that justify a
conclusion that, pending a decision as to the validity of the
registrations, the balance of convenience is in favour of enjoin
ing the appellant from the use of the registered designs. The
appellant had not really got into the Canadian market with
furniture to which such designs had been applied while the
respondent had; and, in the exercise of his discretion, the
learned Trial Judge was entitled to hold against the appellant
an apparent copying of the respondent's designs before they
were registered.
We are, however, of the opinion that the injunction is too
widely worded. In our view the injunction, granted in the terms
of paragraph (a) of the Notice of Motion, should merely
restrain the Appellant, by itself, its officers, servants, or agents,
until disposition of the action, from applying to any articles for
purposes of sale any design contained in Industrial Design
Registrations Nos. 38111, 38112, 38113 or 38114, or any
fraudulent imitation thereof.
Furthermore, we have not been shown any basis for the
injunction in the terms of paragraph (b) of the Notice of
Motion and are of the view that it should be set aside.
In the circumstances, there will be no costs of the appeal.
Pursuant to Rule 337, the appellant may prepare a draft
judgment and bring an application for Judgment under Rule
324.
Rule 337 reads, in part, as follows:
Rule 337. (1) The Court may dispose of any matter that has
been the subject-matter of a hearing
(a) by delivering judgment from the bench before the hear
ing of the case has been concluded, or
(b) after having reserved judgment at the conclusion of the
hearing, by depositing the necessary document in the
Registry,
in the manner provided by paragraph (2).
(2) When the Court has reached a conclusion as to the
judgment to be pronounced, it shall, in addition to giving
reasons for judgment, if any,
(a) by a separate document signed by the presiding judge,
pronounce the judgment (Form 14), or
(b) at the end of the reasons therefor, if any, and otherwise
by a special declaration of its conclusion, which may be given
orally from the bench or by a document deposited in the
Registry, indicate that one of the parties (usually the success
ful party) may prepare a draft of an appropriate judgment to
implement the Court's conclusion and move for judgment
accordingly (which motion will usually be made under Rule
324).
(3) Upon the return of a motion under paragraph (2)(b), the
Court will settle the terms and pronounce the judgment, which
will be signed by the presiding judge. (Form 14).
On July 26, 1976, notice of this motion was
filed. It gives notice of an application for "Judg-
ment pursuant to the oral reasons for Judgment
given ... on Tuesday, February 4, 1975" and is
based on a "Consent" to an "Order" reading as
follows:
Upon the appeal of the Appellant from the Order of the
Honourable Mr. Justice Gibson of the Trial Division, dated
Monday, the 9th. day of December, 1974, granting an injunc
tion in the terms of Paragraphs (a) and (b) of the Notice of
Motion dated the 11th. of October, 1974, effective the date the
Plaintiff files a bond in the sum of $25,000.00 for damages to
the Court, in the presence of counsel for the Appellant and the
Respondent, the Court having given oral reasons this day by
the Chief Justice, the following order is made:
1. The injunction granted by the Honourable Mr. Justice
Gibson on Monday, the 9th. day of December, 1974 in the
terms of paragraph (a) of the Notice of Motion filed in the
Trial Division, dated October 11, 1974 is varied as follows:
An injunction restraining the Appellant, by itself, its offi
cers, servants or agents, until disposition of the action, from
applying to any articles for purposes of sale any design
contained in Industrial Design Registrations Nos. 38111,
38112, 38113 or 38114, or any fraudulent imitation thereof.
2. The injunction granted by the Honourable Mr. Justice
Gibson Monday, the 9th. day of December, 1974 in the terms
of paragraph (b) of the Notice of Motion filed in the Trial
Division dated October 11, 1974 is hereby set aside.
3. There shall be no costs awarded on this appeal.
The proposed consent order is so framed as, if
signed, it would appear to have been made on
"Tuesday, the 4th day of February, 1975", the day
when the appeal was heard and the Court's conclu
sions were expressed.
The first point to be noted is that, as I read Rule
337, there is no judgment of this Court on an
appeal until a judgment (as opposed to reasons for
judgment) has been signed by the presiding judge,
either under Rule 337(2)(a) or under Rule 337(3),
and that such a judgment does not take effect until
it has been signed. I know of no authority for
making a judgment signed under Rule 337(3)
retroactive to the day when the Court's conclusions
were expressed under Rule 337(2)(b).
The second point to be noted is that the draft
judgment consented to does not seem to me to be
apt to implement this Court's conclusions of Feb-
ruary 4, 1975.
I suggest that the judgment might follow the
following lines:
IN THE FEDERAL COURT OF APPEAL
day, the day of , 1976
CORAM: The Chief Justice
Pratte, J.
Urie, J.
BETWEEN:
LIBERTY ORNAMENTAL IRON LIMITED,
Appellant,
—and—
B. FERTLEMAN & SONS LIMITED,
Respondent.
JUDGMENT
1. The appeal is allowed without costs.
2. That part of the judgment of the Trial Division that reads
Order therefore to go granting an injunction in the terms
of Paragraphs (a) and (b) of the Notice of Motion dated
11th October, 1974 effective the date the plaintiff files a
bond in the sum of $25,000.00 for damages, to the Court.
is set aside.
3. The appellant is hereby restrained, by itself, its officers,
servants, or agents, until disposition of the action in the Trial
Division, from applying to any articles for purposes of sale any
design contained in Industrial Design Registration Nos. 38111,
38112, 38113, or 38114, or any fraudulent imitation thereof.
Chief Justice
If the bond referred to in the portion of the Trial
Division judgment to be set aside has not been
filed, appropriate words referring thereto will have
to be inserted to mark the effective date of the
injunction.
I propose that the Rule 324 application for
judgment be dismissed with leave to re-apply.
* * *
PRATTE J.: I agree.
* * *
URIE J.: I concur.
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.