Canada: Exclusive Right

Last Updated: April 30 2008
Article by John McKeown

A recent decision of the English Court of Appeal has provided the first authoritative guidance on the nature and scope of a registered community design.

The Facts

In this case, the plaintiff owned a registered design for a sprayer. The sprayer was used as the container for a well-known air spray product. The side view of the design is shown below, on the left.

The defendant began selling a competing product in a sprayer that the plaintiff alleged infringed its registered design. The side view of the defendant's container is reproduced above, on the right.

After a trial in the High Court, the plaintiff's design was found to have been infringed and valid. The defendant appealed the decision to the Court of Appeal.

The Exclusive Right

A registered community design confers an exclusive right to use it and to prevent any third party from using it without the right-holder's consent. The scope of protection also includes any design which does not produce, on the informed user, a different overall impression. In determining the scope of the protection, the degree of freedom of the designer in developing the design is to be taken into consideration.

It was stated that the "different overall impression test" was inherently rather imprecise and much is left to the tribunal to determine. Notwithstanding the imprecise nature of the test, the court made the following observations:

  1. The test is "different" not "clearly different."
  2. The test is applied from the point of view of a notionally informed user, who is "fairly familiar" with design issues.
  3. If a new design is markedly different from anything that has gone before, it is likely to have a greater visual impact than if there are many similar prior designs. The overall impression created by such a design will be more significant and the room for differences which do not create a substantially different overall impression is greater.
  4. It is legitimate to compare the registered design and the alleged infringement with a reasonable degree of care. The possibility of imperfect recollection has a limited part to play in this exercise.


When the Court of Appeal applied this test, they concluded that the impression which would be given to the informed user by the defendant's product was different from that of the plaintiff's registered design. Even though the same features were found in both, there were clear differences resulting from the different mode of their execution.


The Canadian Industrial Design Act (the "Act") contains different wording concerning infringement. Under this Act, no person shall make, import, sell or offer to sell any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied. Notwithstanding the difference in language, a Canadian court could be influenced by this English decision.


A recent English case illustrates the potential problems with descriptive trade marks.

The Facts

In September 2000, a solicitor practising employment law in Guildford, Surrey in the United Kingdom obtained a trade mark registration for the trade mark JUST EMPLOYMENT for use in association with the provision of legal services relating to employment matters. The lawyer used the trade mark in association with the design reproduced below.

The lawyer's clients were primarily located in the Guildford area.

Just Employment Law Limited is a Scottish company that was incorporated in 2004. It provides legal advice and representation in employment matters. Although based in Glasgow, the Scottish company has a small office in London. The Scottish company used the design presentation of its trade mark reproduced below.

In November 2006, the Scottish company began a radio advertising campaign. The Guildford lawyer demanded that the Scottish company cease infringing his trade mark and/or passing off. When it did not, proceedings were brought for trade mark infringement and passing off. The matter proceeded to trial in the High Court.

The Infringement

It was acknowledged that if the plaintiff had a valid trade mark, infringement had occurred, but the defendant argued the registration was not valid. Notwithstanding the argument that the word "just" had a double meaning, the court found that the registered trade mark was merely descriptive and the registration was invalid.

Passing Off

In order to be successful with a claim for passing off, a plaintiff must establish:

  1. Goodwill or reputation attached to the services which he supplies in the mind of the purchasing public by the association with the identifying "get up" under which his services are offered to the public, such that the get up is recognized by the public as distinctive of the plaintiff's services;
  2. A misrepresentation to the public (whether intentional or not) leading or likely to lead the public to believe that the services offered by the defendant are the goods or services of the plaintiff; and
  3. He has suffered damage by reason of the erroneous belief engendered by the defendant's misrepresentation.

In the context of an action for passing off, goodwill is territorial. While the plaintiff had established a reputation in Guildford, it did not extend to Glasgow, or for that matter, London. The court found that while there had been some confusion, it had not occurred as a consequence of any misrepresentation by the Scottish company. In addition, there was no evidence of any diversion of business away from the Guildford lawyer and no damage had been suffered. As a result, the claim for passing off was dismissed. The court did observe that if the Scottish company carried on business in and around Guildford, passing off could occur. In addition, future radio advertising that did not sufficiently distinguish the Scottish company from the Guildford lawyer could result in a viable claim for passing off.


In Canada, a trade mark is not registrable if it is clearly descriptive of the character or quality of the services in association with which it is used. As in the United Kingdom, even if a registration is obtained, it is possible to attack its validity in an action for infringement.


The Facts

Instabox (Vancouver) Ltd. was a franchisee of Instabox Canada Ltd. from 1988 until October 2002. In April 2002, Instabox (Vancouver) Ltd. changed its name to Ibox Packaging Ltd. (the "Applicant"). In October 2002, the Applicant terminated the franchise agreement. There was nothing in the agreement that set any limits on the type of business it could pursue.

In March 2002, the Applicant filed an application to register the trade mark IBOX in association with, among other things, cardboard boxes. Instabox Canada Ltd. (the "Opponent") opposed the application on the grounds, among others, that the Applicant's IBOX trade mark was confusing with its INSTABOX and design trade mark registration for similar wares. The Opponent's trade mark is reproduced below.

While the opposition was pending, the Opponent brought proceedings against the Applicant for passing off and brought a motion for an interlocutory injunction. The motion for an injunction was denied.

The primary issue in the opposition was whether, at the date the opposition was heard in 2007, the applied-for mark was confusing with the Opponent's mark. In an opposition, the Applicant bears the onus of establishing, on the balance of probabilities, that the applied-for mark is unlikely to cause confusion.

The Hearing Officer emphasized that the determination of whether the applied-for mark was confusing with the Opponent's mark is primarily a matter of first impression and imperfect recollection.

Inherent Distinctiveness and the Extent to Which the Marks Have Become Known

The word portion of the Opponent's trade mark is not inherently strong, as INSTABOX suggests packaging that can be instantly assembled. The word IBOX has a greater degree of inherent distinctiveness, as the prefix "I" in IBOX has no immediate relationship with the Applicant's wares. There was evidence that both of the parties' marks had become known.

Length of Time Each Mark Has Been Used

The Applicant first sold wares marked with its mark in October 2002. The Opponent had not filed proper use to show when it began to use its mark.

The Nature of the Wares and the Trade

The business and the nature of trade of both parties were essentially the same.

Degree of Resemblance Between the Trade Marks in Appearance or Sound or in the Ideas Suggested by Them

Visually, the Applicant's mark was distinguished from the Opponent's mark through the absence of design features. The design features of the Opponent's mark constituted the dominant feature.

The Hearing Officer was not prepared to give any weight to the decision in the action alleging passing off because of the difference between passing off and opposition proceedings with respect to the test to be applied, the applicable onus, and the material dates.

Finally, the Hearing Officer felt it was significant that no evidence of confusion was presented despite the fact that marks had co-existed in the marketplace for more than four years.


Based on the foregoing, it was found that an average consumer, who had an imperfect recollection of the Opponent's trade mark, upon seeing the Applicant's IBOX products, would not be reasonably likely to conclude, as a matter of first impression, that such products were supplied by the Opponent. In addition, the Opponent was not entitled to monopolize the word "box" in association with wares that included boxes.


It appears that significant design elements of the Opponent's mark were sufficient to distinguish it from the Applicant's mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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