IN THE SUPREME COURT OF BRITISH COLUMBIA

Citation:

Tangerine Financial Products Limited Partnership v. The Reeves Family Trust,

 

2014 BCSC 917

Date: 20140527

Docket: S115982

Registry: Vancouver

Between:

Tangerine Financial Products Limited Partnership, TFP

Management Ltd. in its capacity as General Partnership of Tangerine

Financial Products Limited Partnership, Tangerine Financial Products Corp.

Petitioners

And

The Reeves Family Trust, Gundy Co. in Trust for Robert Wells, IHO Management Ltd., Gainey Consultants Inc., Corus Investments Corp., Eyton Group Ltd., G3 Investments Ltd., Tangerine FP Investments Ltd., Norman Q Chow, Corus Financial Ltd., James Henning, Doug Davis, Lisa Davis, Fentoniea Capital Corp., Robert Wells, Jason Cottle, Fourteen Eleven Ltd., Grant Sutherland, RBC Dominion Securities in Trust for RRSP Account 495-91840-13 (William Grant Sutherland), Geoffrey Briant

Respondents

Before: The Honourable Mr. Justice N. Smith

Corrected Judgment: The names of counsel on the front page have been amended on June 3, 2014.

Reasons for Judgment

Counsel for Applicants:

The Bank of Nova Scotia and

ING Bank of Canada

B.W. Dixon

S.T.C. Warnett

Counsel for Application Respondents:

RSP Generation Limited Partnership and RSP Generation Corp.

J.J.L. Hunter, Q.C.

C.E. Hunter

Place and Date of Trial/Hearing, In Chambers:

Vancouver, B.C.

April 25, 2014

Place and Date of Judgment:

Vancouver, B.C.

May 27, 2014


 

I.                 Introduction

[1]             This is an unusual application in which neither the applicants nor the respondents are parties to the proceeding in which the application is brought.

[2]             The court previously appointed a receiver of a business called Tangerine Financial Projects Limited Partnership (“Tangerine LP”) and approved the sale of its assets. The buyer of the assets later resold them to RSP Generation Limited Partnership (“RSP”). One of those assets, RSP says, was the name “Tangerine.” The Bank of Nova Scotia, which had no involvement in the receivership proceeding, has since adopted “Tangerine” as the new name for its subsidiary, ING Bank of Canada.

[3]             RSP and its general partner, RSP Generation Corp., have served a notice of application in the receivership proceeding, seeking to enjoin the bank from using the name “Tangerine.” They rely on the order approving the sale of Tangerine’s assets, which includes the following provision at para. 6:

That every person having notice of this Order shall not take any step to appropriate, interfere with, or use without the written permission of the purchaser any part of the assets, undertaking, goodwill, know-how or intellectual property purchased thereby.

[4]             The bank now applies under Rule 9-5(1) of the Supreme Court Civil Rules, B.C. Reg 168/2009, to strike out RSP’s application, saying there is no basis on which the court could make an order against a non-party and the application is an abuse of process.

II.               Background

[5]             Prior to its receivership, Tangerine LP owned the rights to a particular financial strategy involving unused registered retirement savings plan contribution limits. That strategy had been developed by Geoffrey Briant, who became involved in the management of Tangerine LP, along with William Sutherland and Melvin Reeves.

[6]             Efforts to further develop and market the investment strategy were not successful and, on January 9, 2012, Willcock J., as he then was, granted an order winding up Tangerine LP and appointing the receiver. On March 7, 2012, Willcock J. approved the sale of Tangerine LP’s assets to a numbered company. That is the order that enjoins use of or interference with the assets by anyone having notice of it.

[7]             On December 4, 2012, RSP acquired all of the assets and undertaking of the numbered company. Mr. Reeves, who was formerly one of the managers of Tangerine LP, is now the chief executive of RSP.

[8]             On January 25, 2013, Willcock J. made a further order in the receivership proceeding, enjoining Mr. Briant and Mr. Sutherland from marketing an investment plan he found to be identical to the one RSP had acquired. That order was made on application of both the receiver and RSP. It was upheld by the Court of Appeal on June 17, 2013.

[9]             Meanwhile, the bank of Nova Scotia purchased ING Bank of Canada and, on November 5, 2013, publicly announced it was changing the name of its new subsidiary to “Tangerine Bank.”  Before making that announcement, it applied to register the trademarks “Tangerine,” “Tangerine Bank” and “Banque Tangerine.”

[10]         On November 8, 2013, counsel for RSP wrote to the bank, notifying it of the March 7, 2012, order and asserting that the bank is not entitled to use the Tangerine name in the financial services field.

[11]          The notice of application served by RSP seeks the following relief:

1.                 The Applicant seeks an order restraining and enjoining Bank of Nova Scotia and ING Bank of Canada from:

a.     using the trademarks “Tangerine”, “Tangerine Bank” and “Banque Tangerine” for which registration is sought in application numbers 1638390, 1640250, 1640251 in connection with the promotion and sale of financial services in Canada;

b.     passing off or attempting to pass off their wares and services as and for the wares and services of RSP;

c.      directing public attention to their wares and services in such a way as to cause or to be likely to cause confusion between their wares and services of RSP; or

d.     otherwise interfering with RSP’s use of the assets acquired pursuant to the March 7, 2012 order of this Honourable Court;

III.             Discussion

[12]          The court is not being asked, on this application, to consider the merits of RSP’s claim. The bank relies on Rule 9-5(1) and, in particular, paragraphs (a) and (d) of that rule, to say RSP’s application should be struck out before being heard. Rule 9-5(1) reads:

9-5(1) At any stage of a proceeding, the court may order to be struck out or amended the whole or any part of a pleading, petition or other document on the ground that

(a) it discloses no reasonable claim or defence, as the case may be,

(b) it is unnecessary, scandalous, frivolous or vexatious,

(c) it may prejudice, embarrass or delay the fair trial or hearing of the proceeding, or

(d) it is otherwise an abuse of the process of the court,

and the court may pronounce judgment or order the proceeding to be stayed or dismissed and may order the costs of the application to be paid as special costs.

[13]         Although the rule refers to a “pleading, petition or other document”, sub-provision (a) would not normally have any application to a notice of application. That sub-provision considers whether a reasonable claim or defence is stated. Claims and defences are stated in pleadings, not in a notice of application or any “other document.”

[14]         However, in the unusual circumstances of this application, I find it appropriate to treat the notice of application as analogous to a pleading because it is the first and only document that notifies the bank of a claim against it.

[15]         The test for striking a pleading under Rule 9-5(1)(a) (formerly Rule 19(24)(a)) is well known and was stated in Hunt v. Carey Canada Inc., [1990] 2 S.C.R. 959 at 980. The court must assume that all the facts alleged are true and should not strike out the claim unless it is “plain and obvious” that it discloses no cause of action and is “certain to fail.”

[16]         The factual basis set out in RSP’s notice of application states that Tangerine LP developed the trade name Tangerine in connection with financial services, that the bank subsequently adopted the name, and that use of the name by the bank will cause confusion. That amounts in broad terms to a claim in passing off, both at common law and under the Trade Marks Act, R.S.C. 1985, c. T-13. The elements of that tort are: the existence of good-will or a distinctive reputation in respect of particular wares or services; the deception of the public by misrepresentation and actual or potential damages: see Edward Chapman Ladies’ Shop Ltd. v. Edward Chapman Ltd., 2007 BCCA 370 at para. 18.

[17]         RSP’s application also refers to the express words of the March 12, 2012, order, which is directed to all persons having notice of the order.

[18]         Assuming the facts alleged to be true, it cannot be said that they plainly and obviously fail to state a reasonable claim unless, as the bank argues, the court has no jurisdiction to provide the relief claimed.

[19]         The bank says the court has no jurisdiction to make an order against it in the receivership proceeding because it is not a party to that proceeding. Although the Supreme Court of Canada confirmed in MacMillan Bloedel Ltd. v. Simpson, [1996] 2 S.C.R. 1048, that the court can issue injunctions binding on non-parties, the bank says that jurisdiction is limited to the power to punish for contempt and nothing in RSP’s application asks the court to find the bank in contempt. The Court in MacMillan Bloedel said at paras. 23 and 31:

I conclude that while the relevant principles have been articulated somewhat differently in England and Canada, the practical effect is the same: in both countries, non-parties who violate injunctions may be found in contempt of court. Hence, non-parties may be seen as being, if not technically bound by the order, bound to obey the order. The same rule, it will be seen, has been accepted in other countries with legal systems similar to our own.

It may be confidently asserted, therefore, that both English and Canadian authorities support the view that non-parties are bound by injunctions: if non-parties violate injunctions, they are subject to conviction and punishment for contempt of court. The courts have jurisdiction to grant interim injunctions which all people, on pain of contempt, must obey.

[20]         MacMillan Bloedel arose in the context of a public controversy in which protesters opposed to certain logging activities blocked public roads. The Supreme Court of Canada said at para. 14:

At issue in this case is the power of the courts to use an injunction granted in private litigation to regulate or curtail public conduct. The protesters, members of the public, were blocking public roads.

[21]         RSP says the order of March 7, 2012, was clearly directed at both parties and non-parties and the suggestion that the court lacks jurisdiction is a collateral attack on that order. It says the court made a general order directed at all persons having notice of the order. It now seeks a more specific order directed at an identified party and specific conduct that is alleged to be in breach of the order.

[22]         In that way, RSP says the order it now seeks against the bank is no different than the one it obtained against Mr. Briant and Mr. Sutherland. In making the order, Willcock J. said in chambers at para. 80 of his oral reasons for judgment:

In the circumstances, I am of the view that a further order is necessary to give effect to the order approving the sale of the assets of the limited partnership and safeguard the continuing interests of the parties whose interest the Receiver is protecting.

[23]         In upholding that order, the Court of Appeal said in Tangerine Financial Products Limited Partnership v. Sutherland, 2013 BCCA 283 at para. 40:

The respondents made further application to the chambers judge when they believed the appellants were acting in breach of para. 6 of the order. The chambers judge interpreted his earlier order and concluded that the appellants were acting in breach of the order. He then made a further, more specific, order. This is something judges routinely do when someone is found to be in breach of a court order prohibiting activities described in a general fashion.

[24]         An important difference between that order and the one RSP now seeks is that Mr. Briant and Mr. Sutherland were named parties in the receivership proceeding and had notice of the application giving rise to the order of March 7, 2012. The fact that an order was made in those circumstances does not necessarily support the proposition that a similar order can be made against a non-party who had no knowledge of the proceeding when the order was made.

[25]         However, based on literal meaning of the words in the March 7 order, I cannot say it is plain and obvious that RSP cannot succeed. Nor is it plain and obvious, given the very different factual circumstances, how the principles stated in MacMillan Bloedel might apply in this case.

[26]         In my view, it will be for a judge hearing RSP’s application to determine whether and to what extent the order applies to a party in the position of the bank and whether the Tangerine name is part of the “property” acquired by RSP. That determination must be made on the basis of evidence, including the evidence that was before the court when the order was made. It is not a decision that can be made under Rule 9-5(1)(a), where consideration of evidence is expressly prohibited.

[27]         The bank’s alternative argument is under rule 9-5(1)(d). In the absence of the receivership, RSP could only claim exclusive right to use the name Tangerine in a passing off action, in which it could apply for an interim injunction. However, on the injunction application, it would have to show that there was a serious question to be tried, that it would suffer irreparable harm if the injunction were refused, and that the balance of convenience favoured the injunction. It would also probably have to undertake to pay any damages that may arise from the injunction.

[28]         Any injunction granted would be in effect only until trial, where RSP would have the burden of proving its claim. Prior to that, the bank would have the right of discovery and, depending on the evidence, might be in a position to apply for summary trial.

[29]         The bank says RSP’s application seeks to deprive it of those procedural safeguards and of its ability to properly defend the claim against it. Instead of bringing an action in which it would have to prove its claim, RSP is seeking a summary injunction that will be of indefinite duration. The order would be in place until discharge of the receiver. There is no evidence of when or if the receiver will be discharged because part of the purchase price the receiver is to collect is a share of possible future income.

[30]         In Babavic v. Babowech, [1993] B.C.J. No. 1802, this court said at para. 18:

The categories of abuse of process are open. Abuse of process may be found where proceedings involve a deception on the court or constitute a mere sham; where the process of the court is not being fairly or honestly used, or is employed for some ulterior or improper purpose; proceedings which are without foundation or serve no useful purpose and multiple or successive proceedings which cause or are likely to cause vexation or oppression.

[31]         Abuse of process may be found where a party seeks relief that the court has no jurisdiction to grant or seeks to bypass alternate statutory remedies: Shuswap Lake Utilities Ltd. v. British Columbia (Comptroller of Water Rights), 2008 BCCA 176.

[32]         However, the “plain and obvious” test also applies to applications based on abuse of process: Shuswap Lake at para. 53.

[33]         I agree that any ability RSP may have to rely on the order of March 7, 2012, as against the bank appears to be purely fortuitous. Its application is directed at a specific use of an asset (if it is an asset) and a user that were not in anyone’s contemplation at the time the order was made. I also agree that, if RSP is able get the order it seeks, it will effectively have succeeded in a passing off claim without having to prove its case in the normal way.

[34]         However, these are factors properly to be considered when RSP’s application is heard on the merits. On its face, the order on which RSP relies is very broadly worded. RSP faces substantial hurdles in persuading the court to apply that order to these circumstances, but I cannot say it is the claim is certain to fail.

[35]         The bank’s application must therefore be dismissed. Costs will be in the hearing of RSP’s application.

“N. Smith, J.”