In This Issue
INFRINGEMENT OF INDUSTRIAL DESIGNS
A recent decision of the Superior Court of the Province of Québec decided that the defendant had infringed the plaintiff's industrial design.
A design for the purposes of the Industrial Design Act means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to or are judged solely by the eye.
In order to register a design, an applicant must file an application which includes a declaration that the design was not, to the proprietor's knowledge, in use by a person other than the applicant at the time the design was adopted by the applicant. In other words, the design must be original and there must be some substantial difference between the new applied-for design and pre-existing designs.
A design may be registered only if an application is filed within one year after the publication of the design in Canada or elsewhere. In general terms, publication means offering or making an article to which the design is applied available to the public. The duration of the registration is, in general terms, 10 years subject to payment of appropriate and timely fees to the government.
During the existence of the registration no person shall, without the licence of the owner of the design, make, import, sell or offer for sale 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.
The plaintiff designed and sold steps for entry into swimming pools. It was alleged that the defendant was selling steps which infringed the plaintiff's registered industrial design relating to the shape of a step.
In finding that infringement had occurred, the Court adopted what the editor of this newsletter had written in the leading text book as follows:
In light of the reference in the definition of "design" to "features...that, in a finished article, appeal to and are judged solely by the eye," it appears that infringement must be determined on an ocular basis. Further, in light of the definition of design and the cases which have considered it, the point of view of a customer must be taken. [...] The primary concern is what the article looks like, not what it does. The emphasis is on the visual image conveyed by the article [...].
The appearance of the allegedly infringing article must be compared to the appearance of the registered design. [...]
... the doctrine of "imperfect recollection" has application to the question of infringement in design cases [...] imperfect recollection may be relevant in determining the significance of specific features of a design.
There have been relatively few decisions involving industrial designs. This decision, once it is translated and reported, may be helpful in the future. We cannot quarrel with the approach that the Trial Judge adopted.
SOLID AND RELIABLE
A recent decision of the Federal Court raises the bar concerning the evidence required in section 45 proceedings.
Section 45 Proceedings
Under section 45, the Registrar of Trade-marks (the "Registrar"), on written request, made after three years from the date of a registration, by any person, will give notice to the registered trade mark owner, requiring the owner to furnish within 3 months, an affidavit or statutory declaration showing with respect to each of the wares or services specified in the registration whether the trade mark was in use in Canada at any time during the three year period immediately proceeding the date of the notice.
Where as a result of the evidence furnished, or the failure to furnish evidence, it appears to the Registrar that the mark, either with respect to all of the wares or services or with respect to any of the wares or services, was not in use in Canada, the registration will be expunged or amended accordingly.
The purpose of this section is to provide a summary procedure for trimming the register of dead wood, which may preclude new applications. In order to preserve the summary nature of the proceeding, the requesting party cannot file evidence or cross-examine on the affidavit or statutory declaration.
The Registrar, after a disputed Hearing, maintained the registrant's trade mark in association with some but not all of the wares. In the affidavit submitted on behalf of the registrant, reference was made to brochures advertising the wares in issue. The affiant swore that the trade mark in issue was marked on the wares as shown on the brochures. It was also stated there had been substantial sales of the wares in issue.
Mr. Justice Beaudry referred to the obligation under the section as being a requirement on the registrant to supply facts by way of an affidavit, from which on balance, a conclusion of use may follow as a logical inference. He also referred to the fact that under the Act, in order to demonstrate use in association with wares, it must also be shown that the brochures were given to a purchaser at the time of transfer of the property in or the possession of the wares.
While the representative of the Registrar was prepared to infer that sales of the wares occurred and that the evidence as a whole showed use of the mark, unfortunately, for the registrant, the Court did not agree. The evidence did not indicate that brochures had been given to purchasers at the time of transfer of the property in or the possession of the wares.
In addition, the affidavit was not sufficiently precise when it came to showing use during the relevant three year period. Section 45 creates an obligation on the Registrar to ensure the evidence adduced is solid and reliable. As this had not been done and the affidavit was insufficiently precise, the appeal was allowed and the registration was expunged in totality.
The case emphasizes that when responding to proceedings under section 45, a registrant must provide precise evidence which is both solid and reliable.
DATE OF FIRST USE
A recent decision of the Trade-marks Opposition Board illustrates the importance of specifying the date of first use in a trade mark application with care.
The applicant, for some of its services, claimed a date of first use at least as early as September 1989. The opponent opposed the application on a number of grounds including non-compliance with the Act on the grounds that the applicant had not used the mark since at least as early as September 1989 in association with the applied for services. Both parties filed evidence relating to whether the applicant had used its mark in association with services at the relevant date. The Hearing Officer made a number of observations concerning this ground of opposition.
The Evidential Burden
There is an evidential burden on the opponent to establish the facts relied upon in support of each ground of opposition. Once this initial onus is satisfied, the applicant has the burden of proving that the particular grounds of opposition should not prevent registration of its mark.
To the extent that the relevant facts are more readily available to the applicant, the evidentiary burden on the opponent is lower. The opponent may rely on the applicant's evidence to meet its initial onus but the opponent must show that the applicant's evidence is clearly inconsistent with the applicant's claim.
It is permissible to file an application without specifying a precise day during the month. In such a case, the date of first use is considered to be the last day of the month.
The case law recognizes that an applicant may claim a date subsequent to the actual date of first use out of abundance of caution and in the interest of greater certainty. When the Hearing Officer considered the evidence, he concluded that the opponent had not put forward any evidence of its own, which raised substantial doubts concerning the date of first use claimed in the application. In addition, there was nothing inconsistent or contradictory in the applicant's evidence. As a result, the opponent did not discharge its evidential burden and this ground of opposition was dismissed.
Since any application can be opposed, it is important when an application is based on use that the applicant be in a position to prove that it did in fact begin to use its mark on the date specified in the application. Sometimes it is prudent to specify a month instead of a specific day.
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.