Below is an excerpt from John McKeown’s May Mailer where he discusses the infringement of industrial designs.
Infringement
The Industrial Design Act provides that during the existence of an exclusive right, no person shall, without the license of the proprietor of the design,
(a) make, import for the purpose of trade or business, or sell, rent, or offer or expose for sale or rent, 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; or
(b) do, in relation to a kit, anything specified in paragraph (a) that would constitute an infringement if done in relation to an article assembled from the kit.
Designs are registered in association with the article specifically identified in the application. Infringement will occur when the design or a design not differing substantially therefrom has been applied to the article for which the design was registered.
Previously Published Designs (Prior Art)
In considering whether differences between designs are substantial, the extent to which the registered design differs from any previously published design will be considered. In comparing the design previously published designs, differences in construction, material (leather-canvas, rubber-plastic), and colour will be ignored.
The Questions to be Considered
In order to determine whether infringement has occurred, the following questions need to considered
(a) Were the activities of the defendant without the license of the proprietor of the design?
(b) Did the defendant engage in one of the activities described in items a) or b) above?
(c) Was the allegedly infringing article, an article for which the design was registered? and
(d) Was the design or a design not differing substantially from the design applied to the allegedly infringing article?
In determining whether infringement has occurred a court will ignore similarities or even identities between the registered design and the alleged infringing article which arise from a utilitarian function included within the design.
Comment
It makes sense to obtain industrial design registration but caution has to be exercised concerning bringing an action for infringement. The existence of previously published designs can have a substantial impact on both the validity of the registered design and the scope of protection available to the registered design.
Trademark Reform
Bill C-31
The Government introduced Bill C-31, to implement certain provisions of the budget tabled in Parliament on February 11, 2014 and other measures. This Bill includes division 25 of Part 6 which will amend the Trade-marks Act to in broad terms to, among other things
â—Ź change the name of the Act to the Trademarks Act;
â—Ź make that Act consistent with the Singapore Treaty on the Law of Trademarks;
â—Ź add the authority to make regulations for carrying into effect the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
â—Ź simplify the requirements for obtaining a filing date in relation to an application for the registration of a trademark;
â—Ź eliminate the requirement to file a declaration of use of a trademark before registration;
â—Ź reduce of the term of registration of a trademark from 15 to 10 years; and
â—Ź adopt the classification system established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
Bill C-31 covers all of the amendments introduced in a previous bill and adds additional provisions. It is not clear why the potentially significant changes of Bill C-31 would be included in an omnibus Bill implementing a budget.
Unfortunately Bill C-31 contains provisions which will allow an applicant for a trademark to obtain a registration without any requirement to specify a date of first use of the trademark in Canada. There are significant concerns with respect to the potential negative impact that such a change will have on the Canadian trademark system and the failure of the Government to engage in any consultations with interested parties.
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.