Kun Shoulder Rest Inc. v. Joseph Kun Violin and Bow Maker Inc., docket T-118-97

Date: 19981028

Docket: T-118-97

BETWEEN:

     THE KUN SHOULDER REST INC.

     Plaintiff

AND:

     JOSEPH KUN VIOLIN AND BOW MAKER INC.,

     MARIKA KUN and MICHAEL KUN

     and M & M VIOLIN MAKING AND ACC. INC.

     Defendants

     REASONS FOR JUDGMENT

ROULEAU, J.

[1]      In this action the plaintiff alleges that the defendants have infringed two Canadian Patents owned by the plaintiff and have engaged in activities which constitute passing off.

[2]      The two patents in question are in relation to shoulder rests for use with violins, violas and similar musical instruments. Canadian Patent 1,290,961, granted October 22, 1991, also referred to as the "pivot stop patent" and/or the "'961 patent", is designed to protect a musical instrument from being damaged by the shoulder rest while it is being played. This is achieved by a pivotal mechanism attached to the shoulder rest which allows the instrument to pivot to a certain degree while at the same time assuring full contact between the underside of the base of the shoulder rest and a player's shoulder.

[3]      Canadian Patent No. 2,139,719, granted July 29, 1997, also referred to as the "inward hinge patent" and/or "the '719 patent", is designed to allow the shoulder rest to be conveniently folded and stored, together with the musical instrument in its case, while retaining the rests full adjustability and firmity.

[4]      The plaintiff, the Kun Shoulder Rest Inc. manufactures and sells the Kun shoulder rest worldwide. The principal of the plaintiff is Marina Kun. In 1979 she was married to Joseph Kun, the inventor of the '961 patent and the '719 patent and originator of the Kun shoulder rest.

[5]      Marina and Joseph Kun separated in 1993 and as a result of their separation agreements, Marina acquired the shoulder rest business now carried on by the plaintiff, including all intellectual property rights related thereto. These included certain patents, both issued and pending at the time, as well as the rights to any further developments of the shoulder rests completed by Joseph Kun, any trade mark rights in association with shoulder rests in the name "Kun" and "Joseph Kun Violin and Bow Maker" and, any other related trade marks and trade names.

[6]      The defendants, Michael and Marika Kun, are the children of Joseph Kun from his first marriage. They incorporated two companies, one now known as the Kadenza Violin Shoulder Rest Inc. (formerly M & M Violin Making and Acc. Inc.), the other, Joseph Kun Violin and Bow Maker Inc.. At different times over the relevant period, each of these companies were intended to or did carry on the business of manufacturing and selling violin and viola shoulder rests. The companies are controlled and operated by the individual defendants who are the only officers and directors of the corporations.

[7]      Marina Kun testified to the background history of the Kun shoulder rest as well as to the specifics giving rise to this dispute. Her involvement in the business began in the mid-1970's and continues uninterrupted to date. At the outset I wish to say that she was a very impressive witness who gave her testimony in an honest and forthright manner. I have no hesitation in accepting her evidence in its entirety.

[8]      Joseph Kun and his family arrived in Canada from Czechoslovakia in 1969. During the early 1970's Joseph designed the original Kun shoulder rest and began fabrication of a commercial model in metal. Only modest sales of the rest were realized between 1972 and 1977. Joseph and Marina met in 1975 when he was teaching violin and she took her daughter to him for lessons. They were both separated at the time. She had four children from a previous marriage and he had two. Following their marriage in 1979 Joseph moved in with Marina and her four daughters.

[9]      At the time, Joseph was internationally renowned as one of the finest bow makers in the world. He also wanted to become internationally recognized for making violins. These were his true passions. Nevertheless, he had spent some time working on and developing shoulder rests for the instruments and in 1970 he was granted Canadian Patent No. 838406.

[10]      Immediately upon their marriage, Marina became extensively involved in the shoulder rest business, although she had no prior experience in music or in violins or instruments of that nature. Indeed, the evidence leaves little doubt that she was the driving force and financier behind the operation. She realized that if she and Joseph were going to make a living in the field they would not be able to rely upon him making violins and bows; they would also have to get into the business of mass producing shoulder rests. To that end, she went out and promoted and advertised their products and paid to send Joseph to conferences, international string ensembles, exhibits and conventions. During their marriage Mrs. Kun paid all of the business expenses as well as their household expenses. Furthermore, because Joseph had difficulties with English, Marina did all of his correspondence and attended business meetings with him.

[11]      Joseph's first patent for a shoulder rest, which had issued in 1970, expired in 1987. In 1989 he began work on what would eventually become the '961 patent. As Mrs. Kun testified, once the first patent ran out they needed a new product to push on the market. It took them approximately three years to perfect the invention. On October 22, 1991, Canadian Letters Patent 1,290,961, the "pivot stop" patent issued. The invention is described in the patent as follows:

The present invention relates to shoulder rests for use with violins, violas or the like instruments.

Shoulder rests of this type are useful in increasing the conform of proper holding of the instrument by a player regardless of physical build of the player such as the length of his neck and the configuration of his or her shoulders.

One of the adjustments provided for in quality shoulder rests is the adjustment of a transverse inclination of the underside of the shoulder rest with respect to the place of adjustment of the particular position at which the neck of the instrument is held with respect to a horizontal line must be adjustable while assuring full contact between the underside of the base of the shoulder rest and the player's shoulder. This is achieved by providing a pivotal securement whereby clamping members engaging the sides of the violin are pivotable about a longitudinal axis parallel with the direction of elongation of the base of the shoulder rest.

One of the problems of this arrangement of adjustable transverse angle is in that during the attaching of the shoulder rest an inadvertent slippage may occur resulting in undesired turning of the base about its longitudinal axis and scratching of the bottom of the instrument by one of the edges of the base of the shoulder rest when the side engaging forks slip off or are improperly attached to the instrument.

It is an object of the present invention to further advance the art of shoulder rests of the type mentioned and in particular to reduce the possibility of damaging the particular instrument without reducing the possibility of adjustment of the transverse inclination of the base of the shoulder rest.

[12]      Joseph and Marina's marriage ended amicably. On March 4, 1993, the couple entered into a domestic settlement agreement resulting in the conveyance of the shoulder rest business, including all intellectual property and goodwill associated therewith, to Marina Kun as part of the matrimonial settlement between the two. Joseph was to remain involved in the shoulder rest business as a consultant for a period of seven and one-half years and was not to compete directly or indirectly with the business for a period of fifteen years.

[13]      On April 15, 1993, the plaintiff, The Kun Shoulder Rest Inc., was formed by Marina. It continued operations as the manufacturer and distributor of the Kun Shoulder Rest.

[14]      Approximately one year later, on April 5, 1994, Joseph, Marina and the plaintiff company entered into an agreement amending the original matrimonial settlement agreement. The second agreement confirmed certain provisions of the earlier one and in particular expressly provided for the conveyance of all goodwill of the shoulder rest business to the plaintiff. It also provided that all further developments in shoulder rest technology which were made by Joseph during the currency of his consulting agreement would be the property of the plaintiff. The agreement specifically provided that it would be binding upon the parties, their heirs, executors, administrators and assigns. The end result of the agreements was that the plaintiff held all of the intellectual property rights associated with the business including the rights to the '961 patent and the yet to be applied for '719 patent.

[15]      After the divorce and the assignment of the shoulder rest business to Marina and The Kun Shoulder Rest Inc. in 1993, Joseph carried on his business of manufacturing, buying and selling violins and bows to the public under the name Joseph Kun Violin and Bow Maker. His brochure continued to be distributed until April of 1996 and he still attended Music Fairs, displaying both the Kun shoulder rests as well as his hand made violas, violins and bows. Joseph attended the Musicora Fair in 1996 on his own, where he displayed his book on bow making, his bows and Kun shoulder rests. He gave out the Kun shoulder rests as samples at the fair. Indeed, as Mrs. Kun testified it was in his interest to promote the shoulder rests as he earned a percentage of all sales.

[16]      After the division of the businesses, there was no physical change to either of them. The operations, files and physical assets of both remained as they were prior to the division and Joseph and Marina remained in the same location. The only visible change was the shift of the shoulder rest operation to the corporate name The Kun Shoulder Rest Inc. and there were two notices sent to distributors to advise them to make their cheques payable and address their correspondence to the plaintiff corporation.

[17]      In the fall of 1995, Joseph attended at the offices of Alex Macklin, a senior intellectual property litigator from the firm Gowling, Strathy & Henderson. Mr. Macklin was also an acquaintance of Joseph and Marina. He was originally retained to prosecute this action on behalf of the plaintiff but voluntarily removed himself in response to an alleged conflict raised by the defendants. Mr. Macklin was an honourable and credible witness and I accept his evidence in its entirety.

[18]      He testified that when Joseph attended his law offices that autumn to see a patent agent, he brought with him a prototype of a collapsible style shoulder rest. He left the prototype with Mr. Macklin who cautioned him with respect to his legal obligations under the matrimonial agreement and suggested that he would be well advised to seek independent legal advice. Mr. Kun also mentioned financing his son, the defendant Michael Kun, in order to enable him to get into the shoulder rest business. Mr. Macklin again advised Joseph concerning his obligations under the matrimonial agreement. Mr. Kun returned to the office about a week later and retrieved the prototype.

[19]      The defendants Michael and Marika Kun, Joseph's children, were never involved in the shoulder rest business during this period of time. Michael had worked as an apprentice with his father from about 1983 to the fall of 1988 at which time he left due to a conflict with his father. In fact, the children were rather estranged from their father. Michael's only involvement in the shoulder rest business was to assist Mrs. Kun with the assembly of some shoulder rests because he needed the extra money. From 1988 on he had no involvement whatsoever. Marika Kun worked for the Government of Canada and never went near the business.

[20]     

However, in November of 1995, Michael Kun attended at the offices of Julian Swann, an engineer and patent agent, with a torsion bar shoulder rest invention. The invention was patented in the United States the following year although to date, a commercialized version of this rest has not been marketed.

[21]      Michael first approached Marina Kun about entering the shoulder rest business in November of 1995. She flatly refused. He subsequently approached his sister Marika for financial assistance. The intention at that time, in late 1995, was to market the torsion bar shoulder rest that Michael had developed as well as the Original Kun shoulder rest since the patent had expired. In the resulting partnership between brother and sister, Michael had the responsibilities of manufacturing, production and development, while Marika was responsible for marketing and administering the company.

[22]      On April 8, 1996, Joseph Kun died. Michael and Marika had immediate access to their father's apartment, cottage, vehicle and work shop notwithstanding that they were only beneficiaries of his estate and not, at that time, his executors. Approximately one week after his death, Michael and Marika entered Joseph's place of business and removed a number of items including violins, violas and office files. Even some furnishings belonging to Mrs. Kun were removed.

[23]      A few days later, Michael and Marika approached Mrs. Kun about getting into the shoulder rest business suggesting either a joint venture or that she sell it to them. She rejected both propositions outright. Although she later asked Michael and Marika to return some of the items they had taken, none were forthcoming. In late April of 1996, Marika and Michael requested that Ivan Straznicky, the patent agent who had been involved in each of Joseph's shoulder rest patents, step down as trustee of his estate. They assumed the role as estate trustees.

[24]      On May 31, 1996, the plaintiff applied for registration of the trade mark KUN in association with violin and viola shoulder rests based on a first use at least as early as 1976.

[25]      After the death of their father, Michael and Marika sought legal advice regarding estate matters and their intellectual property rights. On June 14, 1996, they incorporated the company M & M Kun Violin Making & Acc. Inc.. That same month, Michael attended at the office of Julian Swann with a model of the current Kadenza Kompak end member and drum. This model was used as the basis of drawings prepared by Julian Swann's draftsman.

[26]      During the months of June and July 1996, Michael met with Mr. Jerry Hvezda to discuss a possible new mechanism for a collapsible shoulder rest. Mr. Hvezda is the godfather of at least one of the defendants' children and is Michael's neighbour in Opah, Ontario. He testified that the first of these meetings happened in the summer of 1996 at which time only preliminary sketches were prepared and which Michael took away to eventually develop the working product from. It can be taken from Mr. Hvezda's evidence that the efforts to come up with a working product proceeded during the summer of 1996 as he was provided with progress updated by Michael. His evidence however, is in apparent conflict with that of Mr. Swann who suggests he saw a working prototype of the mechanism as early as June of 1996. In any event, the discussions between Mr. Hvezda and Michael Kun allegedly resulted in the idea of the mechanism which is currently used by the defendants in their Kadenza Kompak shoulder rest.

[27]      Michael and Marika decided to incorporate a second company, Joseph Kun Violin and Bow Maker Inc. with the intention of carrying on the business of their late father. This was done on July 29, 1996. By November of that year, the defendants had settled on using the second company, Joseph Kun Violin and Bow Maker Inc. as they had inherited the estate from the father and felt entitled to use this as a trade name for their business.

[28]      On October 31, 1996, the defendant Joseph Kun Violin and Bow Maker Inc. submitted application no. 827,578 to the Canadian Trade Marks Office to register KUN as a trade mark in association with the wares:

(1) shoulder rests, violins, violas, cellos, basses, baroque violins, baroque violas, baroque cellos, baroque basses and bows for these instruments;

(2) mutes, music stands, musical instrument strings,musical instrument cases, chin rests, tail pieces, bow frogs, pegs, finger boards, polish cleaners, oils and varnishes, inlays and bindings, tools and equipment for violin and bow making.

[29]      Counsel for the defendants wrote to plaintiff's counsel on November 1, 1996, suggesting that a meeting take place in order to discuss the various intellectual property issues which had arisen between the parties. A meeting ensued on December 17, 1996, but no resolution was reached. The parties agreed that no further steps would be taken until early in the new year following the holiday season.

[30]      After that meeting, Marina Kun and the plaintiff became aware of a "Greetings" card which had been sent by the defendants to, among others, the plaintiff's distributors and customers in Canada, the United States and abroad. Although the "Greetings" card had been sent prior to the December 17th meeting, no mention was made of it by the defendants at that time. The card stated that the defendants were successors in business to Joseph Kun and announced a "new generation of violin shoulder rests" which would be exhibited at a music fair to be held at Frankfurt, Germany commencing February 26, 1997. The Greetings card contained the following message:

OUR LEGACY - Our father, Joseph Kun passed on his skill, his expertise, his magnificent comprehension of the violinist's soul and his business to us, his children, Michael and Marika Kun.

Announcing KADENZA (Made in Canada - Joseph Kun Violin and Bow Maker Inc.) - the new generation of Violin Shoulder Rests.

Your invitation. You are invited to see, feel and experience our Kadenza Klasik and Kadenza Kompak at the Frankfurt Musikmesse. Opening February 26th, 1997. We look forward to greeting you at our exhibit located in Hall 80, Stand M.

The Kun name and spirit will continue to live in the music of our violins, bows and shoulder rests because our names are: Michael and Marika Kun.

Because of the good will of all those whom our father served is the foundation of our future. It is our pleasure to say "thank you" and wish that your future be filled with happiness, prosperity and beautiful music.

Joseph Kun Violin and Bow Maker Inc. Dealer in Fine Instruments and Bows. Expert Repairs.

Now at Our New Address

1305 Royal York Road

Toronto, Ontario, Canada M9A 5E6

Telephone (416) 236-7275 Fax (416) 236-0944

[31]      The card included a photographic likeness of Joseph Kun holding a violin and bow, together with a superimposed photographic likeness of Michael holding a violin and bow and a superimposed likeness of Marika Kun.

[32]      In response to the defendants' greetings card, the plaintiff, by letter dated December 30, 1996, placed its distributors and customers on notice that there was no relationship, legal or business, between any of the defendants and the plaintiff and that the plaintiff was the sole and exclusive owner of all inventions, intellectual property rights and goodwill associated with the violin and viola shoulder rests developed by Joseph Kun. The notice was also published in the Strad magazine and the Violin Society of America magazine.

[33]      On January 23, 1997 the plaintiff issued and served its Statement of Claim. On the same date, it brought a motion for an interim injunction order restraining the defendants from displaying its shoulder rests at the Frankfurt Fair in association with the name Joseph Kun Violin and Bow Maker Inc.. By order dated February 13, 1997, Mr. Justice Nadon issued an interim injunction, applicable only to the Frankfurt Fair and subsequent music fairs, restraining the defendants from promoting and selling their Kadenza shoulder rests in association with the names "Kun", "Joseph Kun, Violin and Bow Maker", or "Joseph Kun Violin and Bow Maker Inc.".

[34]      Shoulder rests with the trademark KADENZA were displayed at the fair and Michael and Marika Kun handed out their business cards, flyers and a price list for their products. None of that material referred to Kun, other than as use as their surname. The plaintiff subsequently brought a motion for an order that the defendants show cause why an order for contempt should not be granted with respect to Nadon, J.'s interim injunction. By decision dated June 18, 1997, Tremblay-Lamer, J. dismissed the application on the grounds that the defendants had not contravened Nadon, J.'s order.

[35]      Thereafter, on July 29, 1997, Canadian Letters Patent 2,139,719, the "inward hinge patent" issued to the plaintiff. That invention is described in the patent as follows:

It is an object of the invention to alleviate the above problem and to provide a fully adjustable shoulder rest having a firm base, which - when not in use -could be conveniently folded and thus stored, together with the violin, in a limited space in the violin or the like case, while retaining its full adjustability, firmity and limited resiliency in a fully unfolded state. In other words, the object is to maintain all favoured features, i.e. relative firmness and full adjustability, while also allowing storage in a limited space.

[36]      On September 2, 1997, M & M Kun Violin Making and Acc. changed its name to Kadenza Violin Shoulder Rest Inc.. This company now manufactures and sells violin and viola shoulder rests in association with the trade mark KADENZA. In particular, the shoulder rests of the corporate defendant are sold under two brand names, KADENZA KLASIK and KADENZA KOMPAK.

[37]      Before proceeding any further with an analysis of the law and the facts of this case, it is appropriate to make the following comments with respect to the evidence presented at trial. As previously stated, I found Mrs. Kun to be an unimpeachable witness. In the same manner, I fully accept the testimony of Mr. Macklin. I find that the evidence of these two witnesses was the most reliable put forth by either of the parties.

[38]      Michael Kun also testified at the trial of this matter. There are a number of factors which cast severe doubt on his credibility and for the following reasons I find that his evidence is not reliable. First, he admitted to making false statement under oath to the Ontario Court of Justice (General Division) in related proceedings currently pending before that Court. He also confirmed that his sister Marika had given false statements under oath in those proceedings. There is no question that these statements were deliberate and their effect was to financially benefit Michael Kun and his sister Marika, in their capacity as trustees of the estate of their late father. Indeed, in October of 1997, as a result of the false sworn testimony of the two defendants, a Receiver was appointed over their assets and was also put in place as a monitor of the defendant's business.

[39]      There were many inconsistencies and implausibilities in Michael Kun's testimony at the trial of this matter. For example, he admitted to having taken money from the family business without permission in 1988, at the time he left the business and severed all ties with his father for several years. Mr. Kun's explanation is that during the week following his departure from the business, he was in a car accident and required funds to repair his new car.

[40]      He explains his actions by suggesting that he added a post-script to the farewell letter he had written to his father, contained in Exhibit D-32, citing how much money he had taken and why. However, this does not explain how he was able to return and amend the letter one week after it had been written. By his own evidence, this letter had been written the week previously in the early morning hours and had been left on his father's desk to be collected later that same day when his father returned from holidays.

[41]      Michael Kun's credibility is further questioned when he asks this Court to believe that at 3:30 a.m., after drafting this letter to his father, he had the presence of mind to photocopy the letter and then retain it for fifteen years. This is the only explanation which fits with Mr. Kun's evidence since, if the copy of the letter had been retrieved from the files of Joseph Kun, the files which Michael and his sister had taken following their father's death, it would certainly have included the post-script which Michael contends that he added.

[42]      Frankly, it is very difficult for this Court to give any significant weight to the evidence of this defendant. It is for this reason that I find the disappearance of Joseph Kun's prototype for a collapsible shoulder rest followed shortly thereafter by the development of the defendants' collapsible model to be highly suspect. There is no question the prototype existed. Mr. Macklin saw it and retained it in his office for a week. Nor is there any question that Michael and Marika Kun had immediate access to their father's workshop and apartment after his death and removed a number of items.

[43]      Furthermore, it is difficult to ignore the fact that the Court did not hear from the defendant Marika Kun who should have been in a position to corroborate much of the evidence of her brother. It is apparent that she was certainly available, as she attended in the court room on numerous occasions during the trial. Her failure to testify raises the question of whether she would have in fact been capable of corroborating the evidence of her brother in any credible fashion.

[44]      I turn now to the plaintiff's allegations and the relevant law. First, the plaintiff maintains that shoulder rests of the defendant Kadenza Violin Shoulder Rest Inc. are confusing with the plaintiff's distinguishing guise trade mark. It argues that the visual representation of the defendants' products is identical to that of the plaintiff's in size, shape, colour and feel of materials and that the only way to discern any differences between the two products is to conduct a close visual comparison between them. The plaintiff further objects to the over-abundant use by the defendants of the letter "K", which includes misspellings of the words Kadenza, Klasik and Kompak and which are suggestive, according to the plaintiff, of an association with KUN.

[45]      I am unable to agree with the plaintiff's contentions in this regard. There are four leading shoulder rests in the world; the Resonans shoulder rests, the Wolf shoulder rests, the Kun shoulder rests and the Playonair shoulder rests. All of them are sold in a variety of sizes and models. The shoulder rest market is made up of these major players plus some minor others. It is an established market with little, if any, changes or new entrants.

[46]      Since there are such a small number of real competitors the public does not, generally speaking, identify the source of any given shoulder rest by its appearance. With respect to the retail side of this business, people who come to a store to purchase a shoulder rest usually request it by name. Furthermore, it is not only appearance which distinguishes one shoulder rest from another but rather a number of factors in combination including appearance, design, materials used, packaging and brand identification.

[47]      Contrary to the plaintiff's suggestion, there are differences between the Kun Original shoulder rest and Kadenza Klasik which are apparent without close scrutiny. The most noticeable difference is the bright yellow tubing used in the Kun rests as compared to the black overlay of the Kadenza rests.

[48]      Although the outer dimensions of the Kadenza Kompak and Klasik base members are similar to that of the Kun Original base member, there are differences between the molds used for the two rests. For example, the parting lines where the cavity and core split are in different locations between the Original Kun and the Kadenza rests so that there is a noticeable line on the Kun Original base member while this line is absent on the Kadenza base member; the side wall or ridge on the Kadenza is slightly thinner in areas (thickness of this ridge has a bearing on the strength of the base member); there is a difference in the thickness of the base members used by the Kun shoulder rest and the Kadenza shoulder rest; looking down on the shoulder rests, the Kun rest contains a notch that sticks out while this notch is absent on the Kadenza: and, of course there is the actual name of KUN or KADENZA which also forms part of the mold.

[49]      The drums of the rests are also different. In the Kadenza rest, the drum has a boss at the top of the tear shaped drum. This boss is absent on the drums used on the Kun Original shoulder rest. In addition, the Kadenza drum is smoother and more rounder that the Kun Original drum.

[50]      In fact, there are other shoulder rests on the market which more closely resemble those of the plaintiff than the ones manufactured by the defendants. For example, in comparing the M5402 shoulder rest to the Kun Original shoulder rest, the only differences, apart from the trade marks on the base, are the plastic material used in the base members and the rubber tubing covering the fork members.

[51]      Despite its striking similarity with the Kun Original, the M5402 shoulder rest has been available in Canada since the 1980's. Although I did not accept Peter Mach as an expert witness, I do accept his testimony that he has personally ordered the M5402 from the SAGA company in San Francisco through their catalogue and sold it in his retail shop. The shoulder rest is still currently advertised in the catalogue of this large distributor. Nandor Szederkenyi testified that he has known of the M5402 shoulder rests for a few years. He stated that when he first saw them, he asked himself how there could be a rest so similar to the Kun rest. Peter Dawson testified that he has sold these shoulder rests since about 1987 and currently sells them in his shop. At least three Canadian distributors have carried these rests in their catalogue. Outside of Canada, there are a number of distributors who also carry the M5402 rest including one of the premier violin distributorships in the world, Bear & Son based in the U.K.. Mr. Dawson, through his travels across Canada, has personal knowledge of the sale of the M5402 shoulder rests in a number of shops from Vancouver to Halifax. He also testified that individuals have remarked on the similarities of the M5402 to the Kun Original shoulder rests, but he has never heard similar remarks concerning the Kadenza shoulder rests.

[52]      Finally, there is the marking and packaging of the respective products. The plaintiff's shoulder rest clearly shows the mark KUN, while each of the defendants' rests bear the KADENZA mark. In the same manner, the packaging used by the plaintiff is marked with KUN in distinct letters while the packaging used by the defendants bears the mark KADENZA in distinct letters. I do not accept the plaintiff's contention that the use of the letter "K" is sufficient to cause confusion between the products nor does it constitute passing off.

[53]      The packaging for the KUN shoulder rests shows a half silhouette which is consistent on all of the plaintiff's packaging. The size of the box used by the plaintiff varies according to the size of the shoulder rest and there are different colours of boxes for different models. The KADENZA packaging, on the other hand, comes in only one size and colour.

[54]      During the course of the trial, this court had the opportunity of seeing a number of shoulder rests manufactured by various companies. It became readily apparent to me that all of these rests are basically designed in the same manner, with the same practical, functional values and that the various manufacturers have merely taken what was common to the trade and was embodied in Joseph Kun's original patent that expired in 1987. This, in and of itself, does not constitute passing off. As stated in Payton and Co. v. Snelling, Lampard & Co. (1899), 17 R.P.C. 48 (C.A.), cited in Stiga Aktiebolag v. S.L.M. Canada Inc. (1990), 34 C.P.R. (3d) 216 (F.C.T.D) at 232 -3:

The real question of importance is, when you look at the finished articles and the get-up of the packaging, are they things calculated to deceive? In my view they are not. Both parties hereto have merely taken what was common to the trade and the defendant has been careful throughout to indicate very clearly that the goods which it sold were made by it fixing its trade name "Reliable" to all of the articles, except one . . . The boxes of the defendants company are marked on the top and all four sides with the word "Reliable" and on two sides appear the full name and address of the defendant company . . . There was no attempt by the defendant and no reason for attempting to deceive public as to the origin of manufacture of its articles. The likeness was in the goods themselves.

    

[55]      That reasoning is equally applicable to the case at bar.

[56]      The real essence of the plaintiff's complaint is that the defendants Michael and Marika Kun are involved in the shoulder rest business at all and that they use their surnames in relation to that business. However, even though the promotion and selling of a violin shoulder rest in association with the name KUN can be enjoined by this Court, and was so enjoined by Nadon, J. in Kun Shoulder Rest Inc. v. Joseph Kun Violin & Bow Maker Inc. (1997), 74 C.P.R. (3D) 487 (F.C.T.D.) 492, nothing can legally be done to prohibit individuals from using their own surnames on business cards and as signatures on correspondence. It is simply not possible for an individual to acquire a monopoly over a surname in such a way as to prevent another person of the same name from honestly using that name in connection with his goods or his business. This principle of law was set out in Jamieson & Co. v. Jamieson (1989), 15 R.P.C. (C.A.) at 181 as follows:

The Court ought not to restrain a man from carrying on business in his own name simply because there are people who are doing the same and who will be injured by what he is doing. It would be intolerable if the Court were to interfere, and to prevent people from carrying on business in their own names in rivalry to others of the same name. There must be something far more than that, viz. that the person who is carrying on business in his own name is doing it in such a way as to pass off his goods as the goods of somebody else.

[57]      I turn now to the issue of patent infringement. The plaintiff claims that the defendants' Kadenza Kompak infringes both the '961 patent and the '719 patent.

[58]      In determining whether a patent has been infringed, the claims of the patent must first be construed. The Court must then decide, by comparing the allegedly infringing article with the words of the claims, whether the article falls within the scope of the claims. If so, there is infringement.

[59]      When the court engages in construing the claims of a patent, it must be cautious that it does not redraft them. As stated by the Federal Court of Appeal in Eli Lilly & Co. v. O'Hara Mfg. Ltd. (1989), 26 C.P.R. (3d) 1 at p. 7:

When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken.

[60]      I am satisfied that the defendants' Kadenza Kompak does not infringe the plaintiff's '961 patent. The object of the pivot stop patent is to prevent the base of the shoulder rest from contacting the bottom of the violin and causing damage to the musical instrument. Claim 1 of the patent claims a stop means operatively associated with the pivotal joint to limit the restriction of the pivotal movement to a certain angle while claim 2 claims a range of pivot of "about 5 degrees to about 25 degrees".

[61]      However, the '961 patent is not a pioneer patent. There are other pivot mechanisms disclosed in the prior art such as the Hrdlicka Patent, the Resonans shoulder rest and the Wolf shoulder rests. What the plaintiff's pivot stop patent does represent is a slight improvement on devices already well known by providing a limitation of the pivot angle from five to twenty-five degrees, thereby preventing the base of the shoulder rest from contacting the bottom of the musical instrument and damaging it. It was this problem that Joseph Kun was trying to overcome in developing the patent and he achieved it by limiting the range of angle of pivot. This specific range of angle is the inventive claim of the '961 patent.

[62]      The defendants' Kadenza Kompak, on the other hand, has a pivot angle of thirty-five to forty degrees and because of this the shoulder rest can hit the back of the musical instrument while it is being played. In addition, claim 3 of the plaintiff's '961 patent claims a radial projection in its pivoting structure which the defendants' Kadenza Kompak does not have. Claim 5 of the patent claims a pivot stop mechanism that has two upstanding flanges which form an outer channel-shaped portion. This limitation is not present in the Kadenza Kompak.

[63]      Nor am I persuaded that the defendants' Kadenza Kompak infringes the plaintiff's inward hinge patent, the '719 patent.

[64]      The object of the inward hinge patent is to provide a shoulder rest in which fork members can be conveniently folded and stored in a violin case while retaining its full adjustability. The folding of shoulder rests for this purpose is well known. For example, the Original Kun shoulder rest from the 1970's had fork members that could fold downwards and to the side. The Resonans shoulder rest, Exhibit P16, has fork members that can fold downwards and to the side. The Wolf '916 patent, which issued in 1969, discloses a folding shoulder rest. U.S. Patent 222,478 to Colbentson discloses a shoulder rest which has parts that are foldable. U.K. Patent No. 871,826 to Stewart shows a generally bridge type shoulder rest with gripping hooks that function as fork members to keep the shoulder rest on the violin. The pivot assembly permits the gripping hooks to snap or fold down into contact with the base member of the shoulder rest so that the hooks are flush with the base member. This permits the rest to be folded or collapsed so that it can be easily stored in a case together with the musical instrument. This concept was available in 1961. Finally, U.S. Patent No. 3,372,614 to Galster discloses a leaf hinge which can be folded to allow the instrument to be packed away.

[65]      The difference between the shoulder rests of the prior art and the device claimed by the plaintiff's inward hinge patent is that the prior art discloses shoulder rests that fold to the side while the '719 patent claims a shoulder rest that folds inwardly. What gave rise to this collapsible inward feature, at least in part, was the fact that shoulder rests which have a pivot stop, such as that claimed in the plaintiff's '961 patent, cannot use the same folding arrangement as the prior art. These types of shoulder rests could not fold over to the side. The '719 patent therefore added a hinge in order to allow the shoulder rest to fold inwards.

[66]      The folding mechanism used in the Kadenza Kompak is different than the specific mechanisms disclosed in the '719 patent. The Kun Collapsible shoulder rest, an embodiment of the '719 patent, contains an L-bracket that is hinged at the bottom of the end member. It is the L-bracket that folds on the Kun Collapsible shoulder rest. In contrast, the Kadenza Kompak contains a drum that swivels or pivots on the end bracket and it is this drum that hinges down.

[67]      In addition, the structure of the Kadenza Kompak differs from the device described in the '719 patent. The Kompak has an L-shaped bracket that sits on the base member. The L-shaped bracket in the Kompak does not hinge as illustrated in the inward hinge patent; the hinge in the Kompak is located on the drum. Unlike that claimed in the inward hinge patent and embodied in the Kun Collapsible, the drum in the Kompak cannot be snapped off, rather the pin has to be removed. Finally, the Kun Collapsible has two separate pivots whereas the Kadenza has only one pivot that operates in a recess. This mechanism allows tilting motion at the same time as a folding motion.

[68]      The last matter to be dealt with is the defendants' Counterclaim, which is based on alleged false and misleading statements made by the plaintiff and Marina Kun concerning the defendants' products. The defendants' complaint is quite simply that Mrs. Kun made statements to distributors and individuals alleging that the defendants had copied her shoulder rests, were infringing the plaintiff's patents and discouraging customers from buying their products.

[69]      I am not prepared to make any findings in this regard. It is sufficient to note that this entire litigation has resulted from the acrimonious relationships which exist between Marina Kun and the defendants Michael and Marika Kun, whose conduct and motives, with all due respect, have been questionable throughout. It is not difficult to understand Mrs. Kun's actions. She, together with Joseph, developed the shoulder rest business and made the Kun shoulder rest one of the best known and well respected in the world. She spent considerable time, money and effort in this endeavour. Michael and Marika Kun, on the other hand, were never involved in the business and prior to their father's death, showed no interest in it. Nevertheless, although I have great sympathy for Mrs. Kun, there is no remedy available to her in this Court.

[70]      For these reasons, the plaintiff's claim and the defendant's counterclaim are both dismissed. There will be no order as to costs.

                                     JUDGE

OTTAWA, Ontario

October 28, 1998