Federal Court Considers Whether a Respondent Can Force the Conversion of an Application to an Action in a Trade-mark Case

In BBM Canada v Research In Motion Limited (2011 FC 960), the Federal Court found that a respondent to an application involving trade-mark infringement can bring a motion to convert the application to an action, but the applicant’s choice of proceeding will not lightly be interfered with. In its application, BBM claimed infringement, damages for infringement, depreciation and loss of goodwill and passing-off, punitive damages, injunctive relief and delivery-up. The claim was based on the use by Research In Motion of the mark BBM in relation to its Blackberry messenger. As E-TIPS® reported earlier, the Federal Court of Appeal (Court of Appeal) had ruled that such claims can be brought by application rather than action. However, in its reason for judgment, the Court of Appeal did not determine whether a party could move for an order converting such an application to an action, but it stated that this “may be possible.” Subsequently, RIM brought a motion to convert the application to an action. arguing that the causes of action are factually and legally complex and it would be prejudicial to RIM to not have documentary discovery. It also argued that there are issues of credibility that are ill-suited to be determined on a paper record. Prothonotary Aalto decided that it is possible to move for conversion based on Rule 3 of the Federal Courts Rules (Rules), which states that “These Rules shall be interpreted and applied so as to secure the just, most expeditious and least expensive determination of every proceeding on its merits.” It had been suggested, but not decided, in some precedents that this was appropriate based on broad considerations of justice as referred to in Rule 3. The Prothonotary listed eight considerations under which conversion is appropriate, based on precedents involving conversion of applications for judicial review, as permitted by section 18.4(2) of the Rules. He found that in this case, and at this point in the proceeding, there was not a sufficient basis to deny BBM its choice of proceeding by application, but that RIM was free to bring another conversion motion should circumstances change. Summary by: Tom Feather