Below is an excerpt from John McKeown’s June Mailer where he discusses industrial designs.
Actions for Infringement
An action for infringement of a registered design may be brought in any court of competent jurisdiction in Canada by the proprietor of the design. In addition, an exclusive licensee of any right in the design, subject to any agreement between the proprietor and the licensee, may initiate an action. However, the proprietor of the design must be a party to such an action.
The Federal Court has concurrent jurisdiction to hear and determine an action for the infringement of an exclusive right; and any question relating to the proprietorship of a design or any right in a design.
Remedies
Defences
In addition to the usual defences to an action for infringement, the validity of the registration of the design may be attacked without bringing proceedings for expungement.
Claims of invalidity are very common. A claim may be asserted on the basis that:
(a) the design is not the proper subject-matter for registration;
(b) the design was published in Canada or elsewhere more than one year prior to the application for registration;
(c) the design is not original;or
(d) the registered proprietor was not the author of the design.
In addition, it may be alleged that the plaintiff is not entitled to any remedy, other than an injunction, if the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered. However, this defence is not available if the plaintiff has marked the articles to which the registration relates as required by the Act.
Comment
Industrial design registrations can be helpful but in some cases it can be difficult to enforce the rights associated with the registration.
Trademark Reform
Bill C-31
We dealt with the amendments last month. But the provisions which allow an applicant for a trademark to obtain a registration without any requirement to declare use of the trademark in Canada or anywhere else is a significant problem. There are concerns with respect to the potential negative impact that such changes will have on the Canadian trademark system.
The Canadian IP community has come together to explain to the government the serious disadvantages these provisions will cause. Unfortunately it seems there is a lengthy history on the part of the government of not agreeing to changes to bills that implement a budget and to ensure that the progress of the bills through Parliament is not delayed, so we may be stuck with these changes.
Click here to read the entire mailer.