The intersection between industrial design protection and trade-mark protection was highlighted in a recent 2003 Federal Court of Canada decision. In WCC Containers Sales Limited v Haul-All Equipment Ltd (2003 FC 962), the Federal Court Trial Division expunged Haul-All's registration under the Trade-marks Act for a SLOPE BIN CONTAINER DISTINGUISHING GUISE DESIGN. The Court found that the container design (shown below), which Haul-All had sold for many years as an animal-proof refuse bin, was distinctive, but was primarily functional.
The Court further held that distinguishing guise protection for the container would unduly limit the development of the art or industry, contrary to the distinguishing guise requirements in the Trade-marks Act. The Court indicated that registration of a primarily functional mark acts as a restraint on trade. In the present case, there was evidence that Haul-All had used its functional mark to restrain competition by asserting its distinguishing guise registration in public tenders to secure government contracts. Because the other bids would need to avoid Haul-All's container specifications or risk infringement, competition in the tender process was deterred.
The plaintiff contended that the fact that Haul-All had a prior but expired industrial design registration under the Industrial Design Act should prevent Haul-All from registering the same design as a distinguishing guise under the Trade-marks Act. WCC Containers argued that this breached an implied promise to dedicate the design to the public domain after expiry, but the Court declined to rule on the issue. The Court also noted that the line between industrial design and trade-mark has never been clearly delineated by Parliament, leaving open the possibility of multiple forms of protection.
Registered distinguishing guises that are similar to former industrial designs include the traditional "COCA-COLA" bottle, and the hexagonal "J CLOTH" box.
A copy of the decision is available at:
http://decisions.fct-cf.gc.ca/fct/2003/2003fc962.shtml.
Summary by: Jennifer Jannuska
The Court further held that distinguishing guise protection for the container would unduly limit the development of the art or industry, contrary to the distinguishing guise requirements in the Trade-marks Act. The Court indicated that registration of a primarily functional mark acts as a restraint on trade. In the present case, there was evidence that Haul-All had used its functional mark to restrain competition by asserting its distinguishing guise registration in public tenders to secure government contracts. Because the other bids would need to avoid Haul-All's container specifications or risk infringement, competition in the tender process was deterred.
The plaintiff contended that the fact that Haul-All had a prior but expired industrial design registration under the Industrial Design Act should prevent Haul-All from registering the same design as a distinguishing guise under the Trade-marks Act. WCC Containers argued that this breached an implied promise to dedicate the design to the public domain after expiry, but the Court declined to rule on the issue. The Court also noted that the line between industrial design and trade-mark has never been clearly delineated by Parliament, leaving open the possibility of multiple forms of protection.
Registered distinguishing guises that are similar to former industrial designs include the traditional "COCA-COLA" bottle, and the hexagonal "J CLOTH" box.
A copy of the decision is available at:
http://decisions.fct-cf.gc.ca/fct/2003/2003fc962.shtml.
Summary by: Jennifer Jannuska
E-TIPS® ISSUE
04 05 26
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