Judgments

[1995] 3 F.C. 708

T-1181-95

Indian Manufacturing Limited and 951268 Ontario Limited (Plaintiffs)

v.

Kin Ming Lo, Phillip Bannon and Jane Doe and John Doe and other persons, names unknown, who offer for sale, sell, import, manufacture, print, distribute, advertise, promote, ship, store, display or otherwise deal in unauthorized merchandise bearing the trademark Indian Motorcycle or Indian Motocycle in Canada (Defendants)

Indexed as: Indian Manufacturing Ltd. v. Lo (T.D.)

Trial Division, Reed J.—Toronto, August 21; Vancouver, September 28, 1995.

Injunctions — Motion to review Anton Piller order and to convert interim ex parte injunction into interlocutory injunction — Purpose of Anton Piller orders to preserve evidence pending trial, to place goods seized in custody of Court or with plaintiff’s solicitor — Custody taken directly by plaintiffs herein — British case law reviewed — Agent of solicitor allowed to execute order — Plaintiffs’ solicitor’s ethics not questioned — Anton Piller orders civil search warrants obtained on ex parte basis.

Practice — Costs — On motion to review interim ex parte injunction order, costs of motion sought against each “respondent” — No one named as “respondent” in notice of motion — Individuals not added as defendants to action — No rule permits costs award against non-parties.

CASES JUDICIALLY CONSIDERED

CONSIDERED:

Anton Piller K.G. v. Manufacturing Processes Ltd., [1976] Ch. 55 (C.A.); Columbia Picture Industries Inc. v. Robinson, [1986] 3 All E.R. 338 (Ch. D.); Universal Thermosensors Ltd. v. Hibben, [1992] 3 All E.R. 257 (Ch. D.).

AUTHORS CITED

Berryman, J. B. et al. Remedies: Cases and Materials. Toronto: Emond Montgomery, 1988.

Craig, Ian. “Anton Piller After Universal Thermosensors” (1992), 136 Sol. J. 1078.

Exall, Gordon. “Anton Pillers After Hibben” (1992), 136 Sol. J. 218.

Henderson, Gordon F. (editor-in-chief). Trade-marks Law of Canada. Scarborough, Ont.: Carswell, 1993.

Lovick, Sara. “Pillers of Justice” (1992), 142 New Law J. 323.

Practice Direction (Mareva and Anton Piller Orders: New Forms), [1994] 4 All E.R. 52 (C.A.).

Russell, Fiona. “Anton Piller After Universal Thermosensors: Has the Pendulum Swung Too Far” (1992), 14 Eur. Intell. Prop. Rev. 243.

MOTION to review an Anton Piller order and to convert an interim ex parte injunction into an interlocutory injunction. Motion dismissed.

COUNSEL:

Joseph S. Garten for plaintiffs.

No one appearing for defendants.

SOLICITORS:

Joseph S. Garten, Toronto, for plaintiffs.

No solicitor of record for defendants.

The following are the reasons for order rendered in English by

Reed J.: On August 21, 1995, a motion came before me pursuant to an earlier order of the Court granting the plaintiffs what is referred to as an Anton Piller order. The motion was to review the earlier order and to convert the interim ex parte (John Doe) injunction order, contained therein, into an interlocutory injunction. Conversion was sought with respect to individuals who had been served with that order and now could be identified by name. I noted a number of difficulties with the order which was sought. Some were corrected at the time of the hearing of the motion. Others, I decided, needed further consideration.

Upon reflection it is clear to me that at least one aspect of the order sought cannot be granted. Costs of the motion in the amount of $250 payable by each “respondent” are sought. There are no individuals, as far as I can see, who are named as “respondents” in the notice of motion. The notice of motion refers only to defendants and those are the defendants named in the original statement of claim and Anton Piller order of June 5, 1995. I understand the plaintiffs to intend that the costs be collected from each of the individuals who have now been served with that order and against whom the interlocutory injunction is sought. Those individuals, as has been noted, are not being added as defendants to the action. Indeed, counsel for the plaintiffs expressly indicated that he did not wish to make them such. He only seeks an interlocutory order against them, presumably as individuals who have knowledge of the order, although they are not parties to the action. In any event, I have not been referred to any rule which allows for an award of costs against non-parties. That aspect of the draft order cannot be granted.

The second aspect of the application which gives me difficulty are the provisions of the Anton Piller order itself. The purpose of Anton Piller orders, at least theoretically, is to preserve the evidence pending trial. As such, goods seized are usually placed in the custody of the Court, or with the plaintiff’s solicitor, or an agent of the plaintiff’s solicitor. In this case, the “plaintiffs’ solicitor” is also the Vice- President of one of the plaintiffs. Thus, custody is in fact being taken directly by the plaintiffs. Equally, the power to enter and search premises, to seize goods, documents and manufacturing equipment belonging to the defendants, named and unnamed, has also been granted to the plaintiffs directly by virtue of the fact that the plaintiffs’ solicitor is also the company’s Vice-President.

In the landmark decision, Anton Piller K.G. v. Manufacturing Processes Ltd., [1976] Ch. 55 (C.A.), Lord Denning referred to the fact that the authority given to enter premises was given to the plaintiff accompanied by his solicitor or to the solicitor. The requirement of having a solicitor present was to ensure that the powers were only exercised in the presence of an officer of the court. More recently, in the United Kingdom, the desirability of distancing the persons enforcing the order even further from the plaintiff has been considered.

In Columbia Picture Industries Inc. v. Robinson, [1986] 3 All E.R. 338 (Ch. D.), at pages 371-372, the appropriateness of leaving the seized goods in the custody of the plaintiff’s solicitor was questioned. That decision discusses some of the potential abuses that arise in executing Anton Piller orders. In Universal Thermosensors Ltd. v. Hibben, [1992] 3 All E.R. 257 (Ch. D.), at pages 275-277, the Court indicated that, in granting Anton Piller orders, judges should give serious consideration to a number of safeguards. One such safeguard was the desirability of providing that the order should be served and its execution supervised by an experienced solicitor, familiar with the working of such orders, who is not a member of the firm representing the party obtaining the order. Since this decision, there have been numerous commentaries by British authors both criticizing and supporting the suggestions set out in Universal Thermosensors.[1] One author suggests that solicitors be appointed as “licensed Anton Piller executors”, whose first duty would be to the court.[2] On July 28, 1994, the Lord Chief Justice issued a practice direction outlining a new procedure for Anton Piller orders.[3] Under this practice direction, a supervising solicitor is required in virtually all cases. The supervising solicitor gives undertakings personally and serves the order.

I am aware that, in some orders, this Court has given the powers of civil search to certain investigation agencies. I make no finding as to whether this is appropriate although such agencies are neither officers of the Court, nor agents of counsel. I am conscious of the fact that, especially in the case of street vendors, hiring lawyers to police that activity is costly. At the same time, the usual Anton Piller order contains a proviso that an agent of the solicitor may execute it. This should help the cost problem. I ask myself whether, if non-solicitors are to be named as executors of the orders, a more limited grant of power than is usually found in an Anton Piller order should be given. The present Anton Piller order, which I am asked to review and confirm, names, among those listed as potential enforcers of the order, two investigation agencies. I have no knowledge of them.

I do not want to be taken as suggesting that the type of procedures which appear to have been adopted in the United Kingdom need to be adopted in this Court at the present time. The counsel who presently obtain Anton Piller orders from this Court are few in number and are all well-known to the Court. They are individuals in whom the Court has confidence. I am concerned, however, about the terms and conditions which it may become the practice to include in Anton Piller orders without sufficient reflection having been given.

Also, I do not want to be taken as casting any doubt on the ethics of Mr. Garten. Indeed, quite the contrary. I have every confidence that he conducts himself in accordance with the highest standards of integrity. I am, however, concerned about the precedent which is being established. Anton Piller orders are, in fact, civil search warrants[4] obtained on an ex parte basis.

In conclusion, I find, I am simply not convinced that I should grant the order which is being sought.

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