Traps for the Unwary - ProtectingProduct Shape and Appearance-
Arecent decisionof the Federal Court considered the rights associated with a line of playgroundsculptures.
The Facts
Theplaintiff specializes in the design, development, manufacturing, marketing, andbranding of playground equipment. They developed a line of so called playgroundsculptures which included works entitled Performer Arch, Performer Dome andExplorer Dome. The plaintiff’s playground equipment was designed and built forthe use of children on playgrounds and to be played with and climbed on etc.While the sculptures have aesthetic features they are also designed to beplayful and safe, and are subject to technical safety requirements includingrequirements relating to arm reach and rope size.
Thedefendant is an Ontario corporation which is a competitor of the plaintiff’s.The defendant received requests from its distributors for products similar tothe plaintiff’s sculptures. As a result the defendant engineered a line ofplayground equipment that was designed to be the equivalent of the plaintiff’ssculptures.
The Action
Theplaintiff claimed that the design of their playground sculptures was a distinguishingguise. In addition, it was alleged that the defendant directed attention to itsproducts in such a way as to cause or to be likely to cause confusion betweenthe two lines of playground structures. Finally, the plaintiff alleged that itwas the owner of copyright relating to its playground sculptures and that thedefendants infringed the copyright.
Thedefendant denied any responsibility and said that the plaintiff’s failure toseek protection under the IndustrialDesign Act was fatal to their case.
The Trademarks Act
Thedefinition of a trademark under the Act includes a “distinguishing guise” whichis defined as consisting of “a shaping of goods…the appearance of which is usedby a person for the purposes for distinguishing goods manufactured, or sold bythem from those manufactured, or sold, by others.”
Theplaintiff alleged that the appearance of its playground structures wasrecognised by the public as having a particular source and that the visualexternal appearance and three dimensional shape of each of the sculptures, wasa distinguishing guise.
Unfortunately,for the plaintiff the court found that the plaintiff had not presentedsufficient evidence to show that the relevant market recognized the shape andappearance of its playground sculptures as having a single source or that theshape of the sculptures was used to market them. On the contrary the evidenceseemed to indicate that the plaintiff used a traditional written trademark toindicate the source of its products to customers.
Thejudge observed that despite the connection with a product, a trademark must notbe confused with the product. A trademark is something else, a symbol ofconnection between the source of the product and the product itself.
Forthe same reasons the plaintiff was unsuccessful in asserting a claim forpassing off. In addition, the plaintiff was not in a position to show thatthere was any goodwill associated with its playground sculptures in Canada.
Copyright
Theplaintiff established that it owned copyright in its sculptures and that the defendanthad made reproductions of its playground sculptures that were prima facieinfringing. The Copyright Actprovides there is no liability for infringement where copyright subsists in adesign applied to a useful article and with the authority of the copyrightowner the article is reproduced in a quantity of more than 50. For the purposesof this provision a useful article is “an article that has a utilitarianfunction”. A “utilitarian function”means a function other than merely serving as a substrate or carrier forartistic or literary matter.
Theplaintiff argued that its sculptures were not useful. However, it was evidentto the court that they were since they were designed and built for use onchildren’s’ playgrounds, to be played with and climbed on.
Itwas not disputed that the plaintiff had authorized that more than the 50reproductions of each of its playground sculptures be manufactured on aworldwide basis, which had occurred before the defendant copied the plaintiff’ssculptures. However, each of the plaintiff’s playground structures had not bereproduced more than 50 times in Canada when the defendant commenced sellingand manufacturing the impugned products.
Whenthe judge considered the wording of the relevant provision of the Copyright Act, she said it was clearthat the section should be interpreted by reference to the actions of theparties on a worldwide basis. As a result, the plaintiff’s claim for copyrightinfringement was dismissed.
Industrial Designs
TheIndustrial Design Act applies todesigns which means features of shape, configuration, pattern or ornament andany combination of those features that, in a finished Article, appeal to andare judged solely by the eye. A registration could likely have been obtainedunder the Act for the plaintiff’ssculptures. Unfortunately for the plaintiff if a design has been publishedanywhere in the world more than 1 year prior to date of the application inCanada a registration will be refused. In this case the plaintiff failed toobtain protection in Canada under the IndustrialDesign Act.
Comment
Thissituation in Canada as illustrated by this case is substantially different fromthat in the United Kingdom or in the European Union. In the U.K. and countrieswhich are members of the EU it is possible to assert rights relating to anon-registered design if the right protects the shape and configuration of theproducts in issue. The term of protection of the relevant rights in the U.K.and EU vary as does the term of protection for registered designs.
Frequentlythe failure to file a timely application for industrial design in Canada is atrap for the unwary. This is particularly so for businesses from the U.K. orthe EU who may be relying on the non-registered design right. It would makesense for the Government to consider making a non-registered design right availablein Canada.
John McKeown
Goldman SloanNash & Haber LLP
480University Avenue, Suite 1600
Toronto,Ontario M5G 1V2
Direct Line:(416) 597-3371
Fax: (416)597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
0+
