T-4383-75
Consumers' Association of Canada (Plaintiff)
v.
F. W. Woolworth Co. Limited, and Reliable Ho
siery Mills Ltd. (Defendants)
Trial Division, Walsh J. Ottawa, September 20
and 22, 1977.
Practice — Application for order staying all proceedings
under Rule 443(3) by defendants — Application to determine
point of law on matter of principle by plaintiff under Rule 474
— Action initiated for injunction, and delivery up of certain
material — Practice complained of ceased and the money
defendants paid into Court accepted by plaintiff — Whether or
not further proceedings re injunction should be stayed —
Federal Court Rules 443(3) and 474.
In an action for an injunction and for delivery up of certain
material, the defendants apply for an order staying all further
proceedings under Rule 443(3) and the plaintiff applies for a
determination of the issue under Rule 474 on a matter of
principle and the proceedings be not stayed. The defendants
had paid money into Court in satisfaction of the action and the
plaintiff accepted the tender "in satisfaction of the causes of
action in respect of which it was paid in ...". The plaintiff
concedes only one cause of action existed and admits that any
alleged infringements by defendants have long since ceased.
Further, the defendants have offered to deliver up any material
demanded. The plaintiff, nevertheless, wishes to continue to
trial to establish a principle while the defendants argue that
there is no longer an issue in dispute following their tender and
therefore the proceedings should be stayed.
Held, the defendants' motion to stay all proceedings is
granted. In the present case there is no longer an issue since the
alleged infringement, as the plaintiff concedes, has long since
ceased. It is fundamental law that an injunction will not be
granted when it serves no useful purpose. It is also fundamental
that no action may be brought to trial when there is no issue to
be decided. While the plaintiff would like something in the
nature of a declaration to the effect that the sort of use made
by the defendants of its trade mark and findings reported in its
publication is improper and ought to be restrained, the Court
should not be placed in the position of making such a decision
in proceedings in which no issue remains outstanding. Even if
the proceedings were amended to seek a declaration, since there
would still be no need for an injunction, the Court should not
be expected to set a date for trial. The present proceedings,
therefore, should be stayed.
Moon v. Dickinson 63 L.T. 371 and Coote v. Ford [1899]
2 Ch. 93, distinguished.
APPLICATIONS.
COUNSEL:
John Morrissey for plaintiff.
S. Godinsky, Q.C., and J. E. Adamson for
defendants.
SOLICITORS:
Barrigar & Oyen, Ottawa, for plaintiff.
Greenblatt, Godinsky, Resin, Uditsky &
Gasco, Montreal, and Ivey & Dowler,
London, for defendants.
The following are the reasons for judgment
rendered in English by
WALSH J.: Two motions were presented and
argued simultaneously, one being a motion by
defendants for an order staying all further pro
ceedings against both defendants under Rule
443(3) of this Court as well as for permission to
bring said motion without the lapse of two clear
days between service thereof and the day for the
hearing which latter application was granted by
consent, and the other being a motion on behalf of
plaintiff for an order declaring that further pro
ceedings in the action be not stayed and to permit
plaintiff's application for an order fixing a time
and place of the trial to be continued. The facts
may be summarized as follows:
Plaintiff instituted proceedings against defend
ants for an injunction against the use of the regis
tered trade mark "CAC & Design" connected
with advertising or sales promotion of wares
namely, pantyhose manufactured and distributed
by defendant, Reliable, sold among others by
defendant, F. W. Woolworth Co. Limited, and
from implying to the public that plaintiff agrees
with, certifies or endorses said merchandise, the
demand for injunction being accompanied by a
claim for damages from defendant Reliable in the
amount of $200,000 and from defendant Wool-
worth in the amount of $100,000, and also an
order requiring that all advertising material in the
possession of either of the defendants relating to
the said merchandise be destroyed.
Both defendants filed statements of defence and
on October 28, 1976, they tendered payment into
Court pursuant to Rule 441 of $1,000 "as a pay
ment into Court on behalf of both the Defendants
in this cause in satisfaction of the cause of action
in respect of which the Plaintiff claims a sum or
sums of money in satisfaction of any or all of those
causes of action. The present payment into Court
is under no circumstances to be deemed an admis
sion of the cause of action". Notice of payment
into Court was given to plaintiff stating "the said
sum of $1,000 is in satisfaction of all the causes of
action in respect of which the Plaintiff claims". In
due course plaintiff accepted the said tender on the
following terms: "Take notice that the Plaintiff
accepts the sum of $1,000 paid in by the Defend
ants in satisfaction of the causes of action in
respect of which it was paid in and in respect of
which the Plaintiff claims against the Defend
ants".
The parties are not in disagreement as to the
facts, and plaintiff concedes that there was only
one cause of action and also admits defendants'
statement that any alleged infringement by
defendants in the action has long since ceased,
without defendants admitting that there ever was
any such infringement, and that if they have any
advertising materials left relating to the said pan
tyhose they are quite prepared to deliver this up to
plaintiff.
Plaintiff contends that it wishes to proceed to
trial to establish the principle that no one can use
its trade mark CAC or rely on the tests and
reports made by it in order to imply an endorse
ment by it of the product in question. Defendants
for their part contend that since there is no longer
any issue in dispute between the parties following
the acceptance by plaintiff of their tender of
$1,000 proceedings should be stayed and no trial
held.
The issue was dealt with by Associate Chief
Justice Thurlow in a decision dated August 24,
1977, on plaintiff's unilateral application for fixing
a date for trial expected to last three days.
Although this decision stated that since the state
ment of claim appeared to allege a single cause of
action in respect of which plaintiff had accepted
the sum paid into Court and therefore was gov
erned by Rule 443(3) so that all that remained
was for plaintiff to take the money out of Court
and to tax and recover its costs so that the applica
tion for an order fixing a time and place for trial
should be refused, nevertheless in case counsel
wished the point to be dealt with after an oral
hearing the application would not be formally
dismissed for 30 days in order to enable plaintiff to
have the point determined under Rule 474 or for
the defendants to bring an application for an order
staying the action under Rule 443(3). Both
applications have now been brought, the one by
plaintiff and the other by defendants. The question
of law submitted by plaintiff under Rule 474 reads
as follows:
Are all further proceedings in this action stayed because the
plaintiff accepted money paid into Court by both defendants?
In particular, are the proceedings stayed in respect of the
plaintiff's claim for (a) an injunction against both defendants,
(b) delivery up of certain materials and (c) such further or
other relief as this Honourable Court may deem just?
At first sight it might appear that Rules 441 to
445 dealing with payments into Court in satisfac
tion of a claim are not intended for use in any
action save for those "for a debt or damages" as
set out therein. The present action is primarily one
for an injunction, the claim for damages being
incidental thereto and arising out of the cause of
action leading to plaintiff seeking an injunction.
The wording of the Rules in question hardly seems
appropriate to permit a tender in such an action
without at the same time making a full confession
of judgment including agreeing to the granting of
the injunction and other relief sought. The Rules
in question refer to "causes of action" and it is
conceded that in the present case there was only
one cause of action, but the plaintiff nevertheless
claims that the payment into Court only satisfied
the monetary claim arising from the cause of
action and did not dispose of all the issues and that
it is entitled to proceed to trial on them. This
appears to be equating several different claims
arising out of the one cause of action with several
different causes of action for which these Rules
provide. Nevertheless we are here faced with the
factual situation that the tender was made and
that it was accepted by plaintiff without reserve,
although it might be argued that the wording of
the tender made by defendants, (although not the
notice of tender), appears to make a clear distinc
tion between the cause of action in respect of
which plaintiff claims a sum or sums of money and
the other claims, although at the same time stating
that the payment is made in satisfaction of any or
all of the causes of action. In any event I do not
believe that this can be construed as an admission
by defendants that there was more than one cause
of action, or that such an admission would in any
event be binding on the Court or on plaintiff which
itself concedes that there is only one cause of
action although several different types of relief are
sought.
It appears, however, that certain British juris
prudence to which I was referred, based on a
somewhat similar rule casts some doubt on this
conclusion. In The Supreme Court Practice 1976
Vol. 1 reference was made to page 364 under the
marginal notation 2 2 / 1 /5, where it is stated:
This Order applies only to actions for "debt or damages",
and not to actions for an account ...; but it applies to actions
where debt or damages are sought together with other relief
(e.g. injunction), see Moon v. Dickinson, 63 L.T. 371. In such a
case payment in must be in respect only to the claim for
damages, otherwise it is not within this Rule ....
In the case of Moon v. Dickinson 63 L.T. 371 the
action was for an injunction and damages for a
nuisance. Defendants denied liability but paid
money into court in respect of their claim for
damages which plaintiff accepted in satisfaction of
this claim. Plaintiff then sought to tax his costs of
the action. Defendants in turn claimed that plain
tiff should pay them their costs including the costs
of the motion for injunction on the ground that
plaintiff's acceptance was a notice of discontinu
ance of the action. It was held that as the money
was paid into court only in respect, and accepted
only in satisfaction, of the claim for damages, and
as the entire claim or cause of action was not
thereby satisfied, the rule did not authorize the
taxation of costs thereunder. It was held however
that plaintiff's letter was not a notice of discon
tinuance so as to entitle defendants to their costs.
In another case of Coote v. Ford [1899] 2 Ch.
93, to which I was also referred, the claim was one
for damages for trespass, and also for an injunc
tion. Defendant although denying liability and
making a counter-claim paid a sum into court by
way of satisfaction of his liability if any. Plaintiff
sought to strike the counter-claim on the ground
that defendant had by his payment into court
which plaintiff accepted admitted plaintiffs entire
cause of action. It was held that there had been no
such admission by defendant so as to preclude him
from prosecuting his counter-claim nor such
acceptance in satisfaction by the plaintiff as to
preclude him from prosecuting his claim for an
injunction, the payment into court being confined
to plaintiff's claim for damages only. At pages
103-104, Lindley M.R. had this to say:
The rule is confined to actions to recover a debt or damages: it
has nothing to do with ordinary injunctions. I do not say it has
nothing to do with this action, because this action is an action
for damages as well as for an injunction; and so far as it is an
action for damages, it is quite within the defendants' rights to
pay money into court. If a defendant pays money into court
under the first part of the rule, that is, by way of satisfaction,
he is to be taken to admit the claim or cause of action in respect
of which the payment is made. That is not what the defendants
have done here. They have paid the money in under the next
part of the rule, that is, the defendant denying liability. In that
case the rule does not say a word about the payment-in being in
satisfaction which shall be taken to admit the claim or cause of
action.
and at pages 104-105:
But if the action claims an injunction as well as damages, the
defendant cannot, by payment into court, get rid of it so far as
the injunction is concerned. Whether the plaintiff can in this
action, as Stirling J. thinks he can, go on with a view to an
injunction may be possibly a question. I should think he could,
because you cannot properly pay into court by way of defence
to an injunction. You can only treat a payment into court as in
respect of that in which it can be properly paid in, the claim for
damages.
In view of these decisions there would appear to
be some doubt as to whether it is in fact not
possible under our Rules of Court 441 to 445 to
make a payment into Court in connection with the
damages claimed in proceedings for injunction,
damages and other relief, which the plaintiff can
accept without prejudice to his tight to proceed
with the other relief sought. Were it necessary
therefore to definitively decide the question of law
raised and the general question of whether accept
ance of a monetary payment into Court in such
proceedings results in the stay of any further pro
ceeding in the action in question I might have
some hesitancy in so deciding. The question of law
submitted in plaintiff's present motion however is
whether any "further proceedings in this action"
are stayed. Whereas in the British cases referred
to there were valid issues remaining in dispute
between the parties which should be decided it is
apparent that in the present case there is no longer
an issue, the alleged infringement having long
since ceased as plaintiff concedes. It is fundamen
tal law that an injunction will not be granted when
it serves no useful purpose. It is also fundamental
that no action may be brought to trial when there
is no issue to be decided. While the plaintiff would
like something. in the nature of a declaration to the
effect that the sort of use made by defendants of
its trade mark and findings reported in its publica
tion as a result of tests made by it on products is
improper and ought to be restrained, the Court
should not be placed in the position of making
such a decision in proceedings in which no issue
remains outstanding between plaintiff and defend
ants. Plaintiff's counsel suggested that the pro
ceedings might be amended so as to seek such a
declaration, but I am of the view that since there
would still be no need for an injunction the Court
should not be expected to fix a date for trial. I am
therefore of the view that, on the facts, the present
proceedings should be stayed, and I will grant the
defendants' motion accordingly with costs. Plain
tiff's motion asking that the proceedings be not
stayed, and that its application for an order fixing
a time and place for trial be continued will be
dismissed with costs. Since the two motions were
argued simultaneously only one set of costs is
allowed to defendants for the hearing of the two
motions.
ORDER
Defendants' motion to stay plaintiff's proceed
ings is granted with costs. Plaintiff's motion seek
ing that proceedings be not stayed and that it be
permitted to continue its application for an order
fixing a time and place for trial is dimissed with
costs, only one set of costs being allowed to defend
ants for hearing of the two motions.
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.