Summary judgment claim falls foul of Rule 216

In Spenco Medical Corporation v Emu Polishes Inc, the Federal Court of Canada has rejected the defendant's summary judgment application for dismissal of the plaintiff's trademark infringement action.

The plaintiff, Spenco Medical Corporation, initially instituted an action before the Federal Court for trademark infringement against the defendant, Emu Polishes Inc, with respect to Spenco's trademark POLYSORB, which was registered in Canada on March 24 2003 for, among other things, shoe insoles. Spenco has used the mark for green, specialized shoe insoles for medical and athletic purposes since 1990. It claimed that Emu's use of an unregistered (but pending) POLYSOFT trademark for green, general purpose shoe insoles was infringing.

However, the court was then presented with a motion by Emu for summary judgment seeking dismissal of Spenco's action, on the grounds that there was no likelihood of confusion between POLYSORB and POLYSOFT.

Justice Kelen at the Federal Court was asked to decide if, given the facts, a summary judgment should be granted or if the case should go to trial.

Kelen based his decision on Rule 216 of the Federal Court Rules, which governs this issue. However, as a source of interpretation of Rule 216, he relied heavily on the recent decision of the Federal Court of Appeal in MacNeil Estate v Canada (Indian and Northern Affairs Department), which reviewed the principles involved in granting a summary judgment and had provided the following relevant guidance:

• Where an issue of credibility arises from evidence presented, the case should not be decided on summary judgment under Rule 216(3) but rather should go to trial because the parties should be cross-examined before the trial judge.
  
  
• Under Rule 216(3), motions judges can only make findings of fact or law provided the relevant evidence is available on the record and does not involve a serious question of fact or law that turns on the drawing of inferences.
  
  
• Rule 216(3) permits a judge on a motion for summary judgment, after finding that a genuine issue exists, to conduct a trial on the affidavit evidence with a view to determining the issues in the action. However, this is not always possible, particularly where there are conflicts in the evidence, where the case turns on the drawing of inferences or where serious issues of credibility are raised.

In the case at hand, Kelen first noted that there was a genuine issue for trial, that is, whether Emu's use of its POLYSOFT trademark created confusion with Spenco's POLYSORB trademark. Secondly, and most importantly, Kelen decided that he could not, in accordance with Rule 216(3), properly assess the credibility of the parties' evidence. The evidence raised credibility issues with respect to confusion and passing off that warranted oral testimony.

Accordingly, he decided that the case needed to go to trial and that no summary judgment should be granted.

George Kintzos, Léger Robic Richard, Montreal