Supreme Court of Canada
Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd., [1929] S.C.R. 429
Date: 1929-04-30
Clatworthy & Son Limited (Plaintiff) Appellant;
and
Dale Display Fixtures Limited (Defendant) Respondent.
1929: February 28; 1929: April 30.
Present: Duff, Newcombe, Rinfret, Lamont and Smith JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Industrial design—Invalidity of registered design—Want of originality— Anticipation in article of analogous character—Trade-Mark and Design Act, R.S.C. 1906, c. 71—Attack on validity of registered design in action against alleged infringer.
An industrial design, to be entitled to registration under the Trade-Mark and Design Act (The Act in question was R.S.C. 1906, c. 71), must be original. The originality required involves the exercise of intellectual activity so as to suggest for the first time the application of a particular pattern, shape or ornament to some special subject matter to which it had not been applied before. (Dover, Ltd. v. Nürnberger Celluloidwaren Fabrik Gebrüder Wolff [1919] 2 Ch., 25, at p. 29). To constitute an original design there must be some substantial difference between it and what had theretofore existed as applied to articles of an analogous character.
Appellant’s registered design, which related to a rack for display of garments in a retail store, held not to have fulfilled above requirements (and therefore not to have been proper subject matter for registration)
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but to have (been anticipated in a previous design for a bedside table, whose function was held analogious to that of a garment rack. (In re Clarke’s Design, [1896] 2 Oh., 38, at p. 44; In re Read & Gres-well’s Design, 42 Oh. D., 200, at p. 262, referred to-. Walker, Hunter & Co. v. Falkirk Iron Co., 4 R.P.C., 390, distinguished on the facts.)
An attack on the validity of registration of a design is not limited to
proceedings under s. 42 of said Act (R.S.C. 1906, c. 71), but may be made by an alleged infringer when sued by the registered owner. (In re Clarke’s Design, supra, at p. 42).
Judgment of Maclean J., [1928] Ex. C.R. 159, affirmed in the result.
APPEAL by the plaintiff from the judgment of Maclean J., President of the Exchequer Court of Canada (1), dismissing its action for relief for alleged infringement by defendant of plaintiff’s registered design of a display stand. Maclean J. held that there was no novelty or subject matter in the plaintiff’s registered design, and that the same was invalid.
The material facts of the oase are sufficiently stated in the judgment now reported. The appeal was dismissed with costs.
R. S. Smart K.C. for the appellant.
H. G. Fox and B. McPherson for the respondent.
The judgment of the court was delivered by
Lamont J.—This is an appeal from the judgment of the President of the Exchequer Court in favour of the defendant in an action for damages for the infringement of an Industrial Design which the plaintiff had, on November 26, 1926, registered under the provisions of the TradeMark and Design Act (R.S.C. 1906, c. 71). The ground upon which the learned President, based his judgment was that the plaintiff’s design was not novel and was not proper subject-matter for registration.
The design in question relates to a rack or stand for the display of garments in a retail store. In its structure this rack is extremely simple. It consists of a straight horizontal bar so supported at its extremities that garments can be hung on it on ordinary coat or garment hangers. Each of the side supports consists of a vertical bar the lower end of which is fitted into a base or footing which rests upon the floor, and these footings are connected by another
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horizontal bar which holds the rack firm. The footing at each side where it connects with the bar is ornamented so, that, in conjunction with an ornamented boss which encircles the upright at the lower end and reste on the footing, the effect produced is pleasing to the eye. The junction of each upright with the top horizontal bar is also ornamented. It is upon the shape of the base or footing and the character of the ornamentation that the appellant relies to justify the conclusion that the combination is artistic, new and original.
No definition of a “design” is given in the Act. The word must, therefore, be taken in its ordinary signification which Lindley, L.J., in In re Clarke’s Design, stated means: “Something marked out—a plan or representation of something.” A “design” is, therefore, a pattern or representation which the eye can see and which can be applied to a manufactured article. To be entitled to registration the “design” must be original. The Act does not expressly call for novelty, but s. 27 (3) provides that the Minister’s certificate of registration shall, in the absence of proof to the contrary, be sufficient evidence of the originality of the design. Just what is contemplated by “originality” the Act does not make clear. Under the English Act a design, to be registrable, must be “new or original.” As that Act uses both words it has, in a number of cases, been sought to draw a distinction in meaning between them, and it has been held that “every design which is original is new, but every design which is new is not necessarily original.” In re Rollason’s Design.
In Dover, Limited v. Nürnberger Celluloidwaren Fabrik Gebrüder Wolff, Buckley, L.J., defines “original” as applied to designs, as follows:—
The word “original” contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to any one before, that a particular pattern or shape or ornament may foe rendered applicable to the particular article to which he suggests that it shall be applied. If that state of things foe satisfied, then the design will foe original although the actual picture or shape or whatever it is which is being considered is old in the sense that it has existed with reference to another article before.
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And further on he says:—
There must be the exercise of intellectual activity so as to originate, that is to say suggest for the first time, something which had not occurred to any one before as to applying by some manual, mechanical, or chemical means some pattern, shape, or ornament to some special subject-matter to which it had not been applied before.
The above quotations, in my opinion, set out what is called for by our Act. Does the appellant’s design comply therewith?
In so far as the rack feature of the appellant’s design is concerned (that is the horizontal bar upon which the garments are to be hung supported by upright side bars and connected at the bottom by another bar) the appellant admits that, before his registration, it was well known in the art, and no claim is made in respect thereof. The base or footing upon which stress is laid is briefly described as being composed of oppositely-disposed curved arms of which the outer ends and the upper side of the inner ends terminate in a spiral scroll. This configuration is commonly known as the double ogee curve. The top of the base between the scrolls is flat and supports the upright which at the bottom is, as I have already pointed out, encircled by an ornamented boss. On the outer side of the base there is a heart-shaped panel carrying ornamentation. Each upright is crowned with a fluted, conical-shaped cap, while on its outer side, opposite to the point where it forms a junction with the top horizontal bar, there is an ornamented panel. Such being the appellant’s design, we have to determine if it could properly be said to possess, originality. The registration thereof was for the rack as a whole and not simply for its configuration and ornamentation.
In the judgment appealed from, the learned President held that it had been anticipated by a rack (Exhibit B) which the respondent, in the latter part of 1925 or the earlier part of 1926, had obtained in the United States-where it was manufactured. This rack had the same general characteristics as the one for which the appellant; obtained registration. It had the same general outline, and the same underslung feature of the base. It had’ oppositely-disposed curved arms which, it was argued, constituted the double ogee curve. This rack the learned: President held to be essentially the same as the appellant’s registered design. It was, however, without ornamentation. To my eye there is a difference between the
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ogee curve of the arms of the appellant’s base and the arms of the base of the rack obtained in the United States by the respondent. In the latter, instead of having the curve commencing at the inner end of the arm and ending at the extreme outer end, I find the arm extending half its length at the inner end in a perfectly straight line, then making an abrupt curve and ending in a flat knob which does not have the same artistic appearance as the double ogee curve. It must be remembered, however, that to constitute an original design there must be some substantial difference between the new design and what had theretofore existed. A slight change of outline or configuration, or an unsubstantial variation is not sufficient to enable the author to obtain registration. If it were, the benefits which the Act was intended to secure would be to a great extent lost and industry would be hampered, if not indeed paralyzed. Whether these differences between Exhibit B and the appellant’s registered design are so unsubstantial as to prevent the appellant’s design being proper subject-matter for registration I find it unnecessary to determine, for even if we were to hold that the appellant’s registered design was not anticipated by Exhibit B, it was, in my opinion, anticipated by Exhibit F, which shews a cut of a bedside table which had been on the market for years prior to the appellant’s registration, and which was composed of two underslung base footings the arms of which presented the same double ogee curve as the appellant’s design. These footings were joined together by a bar and from the centre of one of them there extended a vertical upright bar which supported a horizontal bar to the upper side of which was fastened a small table. If anyone had taken the uprights joined together by the top horizontal bar of Exhibit B and had set them in the base footings of Exhibit F, he would have had precisely the design registered by appellant, less the ornamentation. The question then is: Could the appellant company take the framework of Exhibit B and set it on the base footings of Exhibit F, place ornamentation thereon, and properly call it an original design? In my opinion it could not. What is there original about it? Not the underslung base; not the configuration of the ogee curves; not the outline of the rack itself; nothing but the ornamentation, and the ornamentation is not what was registered. For the appellant it was contended that it was quite open to it to take old
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designs and combine them into a new form and obtain registration thereof as a new design. I agree, provided that from the combination there is produced an original design which is substantially different from any of the old designs, or any known combination thereof.
It was further contended that, even if the arms of the footings in Exhibit F possessed the same double ogee curve as the appellant’s rack, it had been applied only to bedside tables and not to garment racks, and that, even if it had been registered for bedside tables, the appellant was entitled to have it registered for a different class of article, and, as authority therefor, the case of Walker, Hunter & Co. v. Falkirk Iron Co., was cited. In that case it was held that a design for a kitchen range fire door with moulding on the top which, by being attached to the door, shut out all cold air and assisted the draft, and fulfilled a function in no way analogous to anything found in its former use, was a properly registered design, although similar mouldings had been used on sideboards. Whether or not a design is original is a question of fact and, unless the matter dealt with in one case is identical with that dealt with in another, a decision on the facts in the one case is of little assistance in the other. In In re Clarke’s Design, Lindley, L.J., said:—
But it has been decided! that if a design is really old in its application to some manufactured article its application to a new substance will not necessarily entitle it to protection, although such substance may not fall within the class (to which the first article belongs.
and in In re Read & Greswell’s Design, Chitty J. said:—
To be capable of being registered a design must be “new or original” in fact, and not, as is suggested, “new or original” as to some particular class of goods. It cannot be said to be new and original if it is already being applied to articles of an analogous character.
In my opinion, the function of a bedside table is analogous to that of a garment rack. The purpose of each is to have the top bar support a weight. Whether that weight is placed directly upon the upper side of the bar by the weight itself or is placed there by means of a hook to which the weight is attached cannot, in my opinion, be material. Apart, therefore, from the ornamentation, the appellant’s design was not original at the time of its registration. There was in it no new idea, nor any new way of
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applying old designs to manufactured articles of a class which was not analogous. The appellant’s design was, therefore, not proper subject-matter for registration.
In appellant’s factum a further question is raised, namely, that as the appellant’s design is registered the validity of the registration can only be attacked by proceedings, taken under s. 42, to expunge the entry in the register. In my opinion, this objection is answered by Lindley, L.J., in In re Clarke’s Design (1), where he said:—
The only protection afforded to the public against an abuse of the Act and the acquisition of mischievous monopolies for designs which are neither new nor original, but which have escaped the vigilance of the comptroller and been improperly registered., is the protection of a Court when its aid is invoked by the registered owner of the design against an alleged infringer, or by a person aggrieved who (applies * * * to expunge a registered design from the register.
I would dismiss the appeal with costs.
Appeal dismissed with costs.
Solicitors for the appellant: Caudwell & Symmes.
Solicitors for the respondent: McPherson & Co.
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