TRADE MARKS |
Expungement |
WCC Containers Sales Ltd. v. Haul-All Equipment Ltd.
T-1385-97
2003 FC 962, Kelen J.
26/8/03
36 pp.
Application pursuant to Trade-marks Act, s. 57(1), to expunge respondent's trade-mark Registration No. TMA 468,995 for "Slope Bin Container Distinguishing Guise Design" from Register of Trade-marks--Subject-matter of trade-mark shape of respondent's "Hid-a-Bag" refuse container, animal-proof garbage can for national parks and other areas with wildlife--Applicants (WCC) based expungement application on five grounds: (1) trade-mark invalid and void ab initio because application for trade-mark registration contained false statement; (2) trade-mark invalid because not distinctive when filed on June 12, 1995; or, not distinctive when proceedings commenced on June 26, 1997; (3) trade-mark not registrable as distinguishing guise because its features primarily functional; (4) trade-mark invalid because exclusive use by respondent of distinguishing guise likely to unreasonably limit development of art or industry for refuse containers; (5) respondent breached implied promise made under Industrial Design Act, to dedicate design to public when it obtained trade-mark after expiry of its Canadian Industrial Design registration--Dispute concerns shape of respondent's Hid-a-Bag refuse container--Container in question upwardly inclined rectangular shape, departing from vertical by approximately 30o to 35o, with vertically truncated back end and forwardly extending horizontal base--In expungement proceedings, onus upon party attacking registration to show registration should be expunged-- Corresponding presumption mark in question valid, and if doubt exists then that doubt must be resolved in favour of validity of trade-mark--Firstly, as respondent's error innocent misstatement not fundamental to registration, not enough to render registration invalid or void ab initio--Secondly, regarding distinctiveness, ample evidence of use of trade-mark by respondent prior to June 12, 1995--Respondent also provided evidence shape of Hid-a-Bag container distinguishes it from wares of respondent's competitors--Addition of ornamental or functional features such as those identified by WCC did not negate distinctiveness of mark as message given to public remained clear--Features of distinguishing guise highlighted in trade-mark registration at issue remained easily identifiable in respondent's Hid-a-Bag containers even with addition of other features--All of evidence outlined leads to conclusion Hid-a-Bag container has become "vital identifier of Haul-All company"--Accordingly, respondent's trade-mark cannot be expunged from Register due to lack of distinctiveness--Thirdly, concerning functionality of guise's features, while distinguishing guise may possess functional element or component, mark which goes beyond distinguishing wares of its owner to functional structure of wares transgresses legitimate boundaries of trade-mark--On evidence, WCC made out prima facia case that purpose of sloped design primarily functional so as to overcome presumption design mark valid--On balance of probabilities, Slope Bin Container Distinguishing Guise Design primarily functional--Accordingly, distinguishing guise trade-mark invalid as being primarily functional and subject to expungement on basis of functionality--Fourthly, regarding unreasonable limitation on development of art or industry, actual evidence on restraint on manufacturing and trade has been unequivocally presented to Court by applicants-- Accordingly, trade-mark subject to expungement for unreasonably limiting development of art or industry-- Regarding last ground alleging breach of implied promise made under Industrial Design Act, WCC's submission novel one seeking to bar parties from obtaining distinguishing guise trade-mark if same design has previously been subject of industrial design registration--WCC argued that implicit in grant of 10-year monopoly under Industrial Design Act is promise to dedicate design to public following expiry of design registration--Four reasons to not accede toWCC's argument--First, legislative responsibility rests with Parliament and it has not chosen to make industrial design protection and trade-mark protection mutually exclusive--In light of its decision to explicitly limit overlapping of industrial design protection and copyright protection, it must be presumed Parliament did not feel it necessary to create similar barrier between Industrial Design Act and Trade-marks Act--Second, long-held position of courts not to prohibit registration of design as trade-mark even if it has already enjoyed protection of industrial design registration--Third, neither s. 13(1)(b) nor concept of distinctiveness create needed foundation for this restriction--Fourth, not within competency of this Court to read in restriction sought by applicants-- Therefore, respondent's trade-mark cannot be expunged because of respondent's earlier industrial design registration-- Application to expunge respondent's trade-mark from Register of Trade-marks allowed with costs to applicants * Ed. Note--This decision was reversed by F.C.A. without reasons on April 14, 2004, docket A-429-03--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 13, 57(1)-- Industrial Design Act, R.S.C., 1985, c. I-9.