T-831-82
Algonquin Mercantile Corporation (Plaintiff)
v.
Dart Industries Canada Limited (Defendant)
Trial Division, Mahoney J.—Toronto, March 14,
15, 16, 17, 18; Ottawa, June 2, 1983.
Industrial design — Portable griddle-oven — Infringement
claim and defence that registration invalid — "Design" what is
registrable — Comments of Jackett P. in Cimon case that
design re shape registrable if "ornamentation" but not if
necessarily associated with article's function or process of
creation — Design's shape present in earlier griddles and
function of appliance makes similarity in certain features
inevitable — No infringement since little resemblance between
products — Display of plaintiffs prototype at Chicago expo
sition not publication in Canada even though Canadians
present — "Publication" in s. 14(1) defined as offering design,
or making it available, to public — `Public" including those
actually interested in exploiting design or regarded by design
owner as likely to be so — Disclosure of design to obtain
orders for derivative article being publication — Plaintiff
showing prototype to potential buyers in Canada more than
one year before registration — Confidentiality normally
attaching to private commercial proposition not averting pub
lication — Any disclosure to solicit orders probably publica
tion regardless of confidentiality level — Registration invalid
— Action dismissed — Industrial Design Act, R.S.C. 1970, c.
1-8, s. 14(1).
The plaintiff claimed that the portable griddle-oven which
the defendant proposed to market infringed the plaintiffs
registered industrial design for a similar appliance. The defend
ant maintained that the design had been published in Canada
more than one year prior to registration, contrary to subsection
14(1) of the Industrial Design Act, and that the plaintiffs
registration was therefore invalid.
Held, the plaintiffs design has not been infringed, and is, in
any event, invalid.
Under the Act, a "design" is what may be registered. The
Act itself contains no definition of this term, but in the Cimon
case, Jackett P. commented upon the registrability of a design
relating to an article's shape. The President stated that a design
of that sort is not per se unregistrable; however, having pointed
out that a registration under this Act may not be obtained for
something which determines either an article's nature or its
method of production, he went on to distinguish a shape which
constitutes "ornamentation" of an article (such a shape being
registrable) from a shape which necessarily obtains where the
article is created either to perform a certain function or by
means of a certain process.
It would be possible to design a griddle-oven with a basic
shape different from that of the design of the defendant's
product. The latter shape, though, was a feature of griddles
that were on the market prior to the plaintiff's registration.
Furthermore, the function of the appliance implies certain
elements, which will thus be common to different brands, so
that some similarity in the general appearance of those brands
is inevitable. It is for the Court to decide whether one design
infringes another. There is not much resemblance between the
two products at issue here; hence there is no infringement.
The plaintiff did give some exposure to a plastic prototype of
its product in advance of the one-year grace period allowed by
subsection 14(1). One instance of this occurred in Chicago,
where the prototype was displayed at an exposition. The show
was attended by Canadians; nonetheless, that showing did not
constitute a publication in Canada, and so did not offend
against the subsection. In addition, though, the plaintiff did
show the prototype to various merchandisers in Canada, with a
view to gauging and developing interest in the product. How
many of these potential buyers there were is not important.
What matters is whether the disclosure to them amounted to a
"publication" of the plaintiff's design.
In the leading case of Ribbons v. Belding, the Exchequer
Court mistakenly defined "publication" in terms of the article
to which the design applies. One must instead look to the design
itself, "publication" being properly defined as offering the
design, or making it available, to the public. "Public", in turn,
has many meanings but, for purposes of the definition of
"publication", must be taken to include those persons who are
actually interested in taking advantage of the design or who are
regarded by the design owner as likely to be interested. Disclo
sure of the design with a view to obtaining orders for an article
to be made according to it is a publication of the design.
In its dealings with the merchandisers, the plaintiff made no
formal arrangements to ensure the confidentiality of its design.
It was reasonable to expect that the merchandisers would not
reveal the design to the general public, but they could also be
expected to discuss it within their own organizations. In short,
the level of confidentiality which characterized these dealings
was the same as that which ordinarily attaches to any private
commercial proposition. Such confidentiality does not prevent a
disclosure from being a publication of the design; therefore, the
disclosure to the merchandisers more than one year before
registration rendered the registration improper, and it should
be expunged. It is conceivable that some greater measure of
formal confidentiality would prevent this result, but the better
view is probably that any disclosure made for the purpose of
soliciting orders constitutes publication.
CASES JUDICIALLY CONSIDERED
APPLIED:
Kangol (Manufacturing) Ld. v. Centrokomise (London)
Ld. (1937), 54 R.P.C. 211 (Eng. Ch.D.).
NOT FOLLOWED:
Ribbons (Montreal) Limited v. Belding Corticelli Lim
ited, [1961] Ex.C.R. 388; Global Upholstery Co. Ltd. et
al. v. Galaxy Office Furniture Ltd. et al. (1976), 29
C.P.R. (2d) 145 (F.C.T.D.).
CONSIDERED:
Cimon Limited et al. v. Bench Made Furniture Corpora
tion et al., [1965] 1 Ex.C.R. 811; 48 C.P.R. 31.
REFERRED TO:
Blank v. Footman, Pretty, and Co. (1888), 5 R.P.C. 653
(Eng. Ch.D.); In the Matter of Sherwoods Design
(1892), 9 R.P.C. 268 (Eng. Ch.D.); British Insulated et
al. v. London Electric Wire Company et al. (1913), 30
R.P.C. 620 (Eng. Ch.D.); Gunton v. Winox, Ld. (1921),
38 R.P.C. 40 (Eng. Ch.D.).
COUNSEL:
R. Dimock for plaintiff.
G. A. Macklin, Q.C. for defendant.
SOLICITORS:
Sim, Hughes, Toronto, for plaintiff.
Gowling & Henderson, Ottawa, for defend
ant.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This is an action for infringement
of an industrial design for a portable combination
griddle and oven, registered February 16, 1980, as
no. 46557 under the Industrial Design Act.I
Toward the end of the trial, an allegation of
perjury on the part of an earlier witness was made.
I was obliged to await a transcript of the evidence
before rendering judgment. This has resulted in a
lengthy delay. Having perused the transcript, I am
satisfied there was no perjury. I was also satisfied,
at the end of the trial, that there was no infringe
ment and, accordingly, by order dated March 25,
1983, I dissolved the interlocutory injunction as it
applied to the defendant's griddle which it had
been about to market when enjoined from doing
so.
R.S.C. 1970, c. I-8.
Specimens of the plaintiff's product, as market
ed, and the defendant's, as proposed to be market
ed, are in evidence as Exhibits P-2 and P-4 respec
tively. Exhibit P-2 is not a precise reproduction of
the registered design. The figures of the registered
design are reproduced in Appendix "A". Drawings
of Exhibit P-4 in identical scale and perspective to
those in Appendix "A" are reproduced in Appen
dix "B". The drawings of Appendices "A" and
"B" are respectively Exhibits L-3 and L-2 to the
expert affidavit of Paul Arato, the material parts
of which were taken as read as his evidence in
chief. I fully accept his evidence.
The Industrial Design Act was extensively can
vassed by Jackett P. [as he then was], in Cimon
Limited et al. v. Bench Made Furniture Corpora
tion et al. 2 I see no useful purpose in a similar
exercise. What is registrable under the Act is a
"design" and the Act does not define "design".
Jackett P., [at pages 831 and 832-833 Ex.C.R.]
held:
The sort of design that can be registered is therefore a design to
be "applied" to "the ornamenting" of an article. It must
therefore be something that determines the appearance of an
article, or some part of an article, because ornamenting relates
to appearance. And it must have as its objective making the
appearance of an article more attractive because that is the
purpose of ornamenting. It cannot be something that deter
mines the nature of an article as such (as opposed to mere
appearance) and it cannot be something that determines how
an article is to be created. In other words, it cannot create a
monopoly in "a product" or "a process" such as can be
acquired by a patent for invention. There is, moreover, nothing
in the legislation that limits the type of design that may be
registered (as was suggested in argument) to those providing
for something that is applied to an article after the article
comes into existence.
The fact that a design relates to shape or configuration of an
article is not, in itself, an objection to its registration. As long
as it is a design to be applied "to the ornamenting" of an
article, it is eligible for registration even though it requires that
its purpose of "ornamenting" be accomplished in whole or in
part by constructing the article, or parts of it, in a certain shape
or shapes. (See In re Clarke's Design, [1896] 2 Ch. 38 at p. 43,
per Lindley L.J., "A design applicable to a thing for its shape
can only be applied to a thing by making it in that shape.")
(This is quite a different thing from claiming the shape or
configuration that an article necessarily assumes if it is to serve
2 [[1965] 1 Ex.C.R. 811]; 48 C.P.R. 31.
a certain purpose or if it has been constructed in accordance
with a certain process.)
It would, I suppose, be quite possible to design a
portable combination griddle and oven having
another basic shape than the "rectangular tray-
like shape" of the design and the defendant's
appliance. That basic shape is the shape of port
able griddles on the market before registration of
the design, e.g., Exhibit D-13, and once it is
adopted, the function of the appliance requiring
certain common elements, there is bound to be a
certain similarity in the general appearance of
different brands of the appliance, just as there is a
similarity in the general appearance of different
but contemporary makes of four-door sedans or
tri -jet aircraft.
Whether one design infringes another is a ques
tion to be determined by the eye of the Court. In
their details, the visual aspects of the various
elements making up the registered design and the
defendant's appliance, e.g., legs, handles, surface
layout, are very different. To my eye, the defend
ant's appliance does not look very much like the
registered design at all. There is no merit to the
allegation that it is a fraudulent imitation. I find
no infringement.
The defendant challenges the validity of the
registration on a number of grounds including that
it had been published in Canada more than one
year prior to its registration. The Act provides:
14. (1) In order that any design may be protected, it shall be
registered within one year from the publication thereof in
Canada....
The registration issued February 16, 1980. The
display of a plastic prototype of the appliance
subject of the design at the National Housewares
Exposition in Chicago, during January, 1979, was
not a publication in Canada, notwithstanding the
presence of Canadians, mostly potential purchas
ers, at the exposition.
Before committing itself to production of the
appliance, the plaintiff, in December, 1978 and
January, 1979, showed the plastic prototype,
Exhibit D-6, to a number of persons in Canada.
Those persons were responsible for accepting an
item for inventory and/or catalogue listing by
department stores and other chains.
John Cluff, since retired, was at the material
time a central buyer for the Shoprite catalogue
division of the Hudson's Bay Company. He
described the process.
Q. ... Could you explain what a central buyer is?
A. A central buyer works under the direction of a principal
buyer in a department of the Hudson's Bay Company.
Our job was to interview suppliers, to negotiate terms, to
look at a new merchandise, to arrange advertising, na
tional advertising as opposed to local or regional advertis
ing which was done by each region across the country.
Q. Now, do I understand correctly that the central buyer's
job is to list products?
A. Yes, sir, everything begins in the General Merchandise
Office. If anybody wants a company [sic] listed with the
Bay or with Shoprite it began in our office and was listed
in the computer.
Q. What does listing entail?
A. Looking at the product, deciding whether it is our type of
product or not, whether we wish to carry it, whether the
terms, prices, et cetera, are satisfactory, whether we think
the product will sell successfully, based on a judgment
you then enter it into the computer.
Q. Okay, that is once it is decided to be listed?
A. Yes, that is correct.
Q. Once a product is listed, what happens to the product?
A. Once it is listed and a listing goes across the country to
our seven retail regions it is up to the regional department
manager to decide whether or not it is suitable for their
region and whether or not they will buy and in what
quantity they will buy.
Q. So, who is it that actually places the orders as to
quantity?
A. Each of our seven regional department managers places
their own orders.
Q. What terms do they provide, quantity and ...
A. Quantity and the cost which we had already negotiated in
Toronto.
Q. So the cost was negotiated in Toronto?
A. The cost was in the computer.
Q. What other terms are ...
A. Payment terms, advertising, whether we were going to
demonstrate the article within our departments, national
advertising. To a degree local advertising which was
followed up at the regional level.
(Transcript, page 871, [line] 30 to [page] 873,
[line] 19.)
Acceptance by central buyers was the sine qua non
of the successful merchandising of the appliance.
It involved not only judgments by the central
buyers that the item was a merchantable product
but agreements on price and other terms of supply
and marketing between the plaintiff and the mer-
chandisers. In - other words, to obtain a listing, the
plaintiff had to commit itself to the terms upon
which it would supply the appliance.
I accept the evidence of Ben Liederman, a
former Director of Sales of the plaintiff, who
visited most, if not all, of the central buyers
approached prior to February 16, 1979. The visits
were intended to ascertain market prospects and to
obtain an expression of interest by individual mer-
chandisers. No firm orders were obtained. At the
time, he says:
Most of them said, "Let us know when you can deliver, what
the costs are going to be and then we will probably list it."
(Transcript page 840, [lines] 26 to 28.)
The plaintiff made no formal arrangements to
ensure the confidentiality of its design. It was
reasonable to expect that the central buyers would
not disclose the design to the general public. On
the other hand, they could reasonably be expected
to discuss it within their own organizations. There
was neither more nor less confidentiality attached
to the disclosures than attaches to any ordinary
private commercial proposition. The number of
central buyers to whom the prototype was dis
played is not important. The question is: Was such
disclosure a "publication" of the design within the
contemplation of subsection 14(1)?
There are numerous English authorities holding
that disclosure of a design in the solicitation of an
order is a publication of the design within the
contemplation of their successive comparable
acts. 3 It is enough to look at the most recent of
3 Blank v. Footman, Pretty, and Co. (1888), 5 R.P.C. 653
[Eng. Ch.D.]. In the Matter of Sherwoods Design (1892), 9
R.P.C. 268 [Eng. Ch.D.]. British Insulated et al. v. London
Electric Wire Company et al. (1913), 30 R.P.C. 620 [Eng.
Ch.D.]. Gunston v. Winox, Ld. (1921), 38 R.P.C. 40 [Eng.
Ch.D.].
these. 4 The British Act of the days provided for
the registration of a design "not previously pub
lished in the United Kingdom". The absence of the
one year's grace period in the British Act is not
material to this issue. Commercial interviews
before registration in which the designer "was
endeavouring to see whether he would be able to
put himself into a position to do business" [at page
217] and in which the design was disclosed to a
potential purchaser were held to be publication.
The registration was expunged.
The leading Canadian case dealing with this
aspect of subsection 14(1) is Ribbons (Montreal)
Limited v. Belding Corticelli Limited, 6 in which it
was held:
"Publication" means the date on which the article in ques
tion was first offered or made available to the public ....
That definition was applied in Global Upholstery
Co. Ltd. et al. v. Galaxy Office Furniture Ltd. et
al. 7 In the Ribbons case, the disclosures in issue
were to persons with whom the design owner
wished to explore the feasibility of making a trans
parent plastic display package for his own use. In
the Global case, the design was for a chair and the
disclosure was to a manufacturer whom the design
owner apparently wished to interest in both manu
facturing the chairs and selling them to the trade.
In other words, he seems to have been interested in
selling or licensing his design rather than in having
articles made according to it and selling or using
them himself. In both cases, the disclosures were
held not to have been publications of the designs.
With respect, the definition adopted appears
founded on a confusion of the registered design
with an article made according to it, which
appears to have led the learned Judge in the
Global case to apply it as if subsection 14(1) dealt
4 Kangol (Manufacturing) Ld. v. Centrokomise (London) Ld.
(1937), 54 R.P.C. 211 [Eng. Ch.D.].
5 Patents and Designs Acts, 1907-1932, s. 49.
6 [1961] Ex.C.R. 388 at p. 402.
7 (1976), 29 C.P.R. (2d) 145 [F.C.T.D.].
with publication of such an article rather than the
design. It may, of course, be that publication of the
design and an offering or making available of the
article made according to it will coincide. How
ever, in order to conform the definition of "publi-
cation" to the unambiguous words of subsection
14(1), it is, I think, clear that the definition must
be:
"Publication" means offering or making available the design to
the public.
By that definition, there was no publication in the
Ribbons case. Whether there was or not in the
Global situation would seem to depend on one's
definition of "public".
"Public" has many meanings but for purposes of
the definition must be taken to include those who
are, in fact, or are considered by the design owner
as apt to be, interested in taking up the offer of the
design or advantage of its availability. Disclosure
of the design, for the purpose of obtaining orders
for an article to be made according to the design,
is a publication of the design. I am not prepared to
hold that any measure of formal confidentiality
would avoid such a disclosure being publication; I
do hold that ordinary commercial confidentiality is
ineffective for the purpose. I incline to the view
that the better course is to follow the English
authorities and to hold that all disclosures for the
purpose of soliciting orders constitute publication.
How can one be said not to be publishing his
design when he discloses it for the express purpose
of marketing it?
The design was published in Canada more than
one year before its registration. It was not regi-
strable and the registration should be expunged.
The action will be dismissed with costs. There
will be a reference as to the damages occasioned to
the defendant as a result of the issue of the
interlocutory injunction herein.
APPENDIX "A" - ANNEXE «A»
APPENDIX "B" - ANNEXE «B»
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