T-661-79
Goodyear Tire & Rubber Company (Applicant)
v.
Commissioner of Patents and the Minister of
Consumer and Corporate Affairs (Respondents)
Trial Division, Mahoney J.—Toronto, February
20; Ottawa, February 23, 1979.
Prerogative writs — Mandamus — Industrial design —
Jurisdiction — Application for mandamus requiring respond
ents to register industrial design — Respondent Commissioner
of Patents requiring questions to be answered concerning
appropriateness of subject matter for registration, and details
concerning publication — Whether or not Minister authorized
to make determination whether design proper for registration
and whether it has been published more than a year before —
Respondents objecting to Court's assuming jurisdiction —
Industrial Design Act, R.S.C. 1970, c. 1-8, ss. 14(1), 22(1) —
Federal Court Rule 702(2),(7).
Applicant applied for a writ of mandamus against respond
ents requiring them to register an industrial design, as applied
for by the applicant, under the provisions of the Industrial
Design Act unless respondents find the design to be identical
with or so closely to resemble any other design already regis
tered as to be confusing. The examiner charged with processing
the application refused to continue until provided with complete
answers to a number of questions. The first five questions were
grounded in jurisprudence dealing with whether what had been
registered was a proper subject matter for registration at all,
and the sixth was directed to the initial words in subsection
14(1) of the Act concerning publication. The issue is whether,
under the Act, the Minister is authorized to make the determi
nation that the design is or is not a proper subject matter for
registration and whether it has been published more than a year
before. The respondents raised objections to the Court's assum
ing jurisdiction based on Federal Court Rule 702(2),(7) and
section 22(1) of the Industrial Design Act.
Held, the application is allowed. The respondents are, by
definition, a federal board, commission or other tribunal in the
execution of their duties under the Act. This Court has jurisdic
tion to entertain the proceeding in the form it was brought and
to make the order sought. The whole scheme of the Act is
simply not consistent with the assumption by the Minister of a
duty to undertake an elaborate, extensive and costly inquiry in
the processing of an application. Parliament intended that he
limit his examination to the matters expressly required by
sections 4, 5 and 6. The questions posed by the examiner have
nothing at all to do with any of the matters with which the
Minister is required to deal in determining whether or not the
applicant is entitled to have the design registered. The refusal
to process the application in issue is not a decision from which
an appeal may be taken under subsection 22(1) of the Act, even
assuming that an "omission ... to make any entry in the
register" embraces the refusal of an application to register a
design. As this is a proceeding under section 18 of the Federal
Court Act, rather than a proceeding under the Industrial
Design Act, respondents' arguments dealing with the applicabil
ity of Rule 702 are not valid.
Continental Oil Company v. Commissioner of Patents
[1934] Ex.C.R. 118, distinguished.
APPLICATION.
COUNSEL:
D. F. Sim, Q.C. for applicant.
H. Erlichman for respondents.
SOLICITORS:
Donald F. Sim, Q.C., Toronto, for applicant.
Deputy Attorney General of Canada for
respondents.
The following are the reasons for order ren
dered in English by
MAHONEY J.: These reasons ensue upon an
order made from the bench at the conclusion of
the hearing that:
a writ of mandamus issue as against the Respondents and each
of them requiring them to register as an industrial design under
the provisions of the Industrial Design Act, R.S.C. 1970, c. I-8,
the design as applied for by the Applicant in its application No.
14-06-78-12 unless he or they find the said design to be
identical with or so closely to resemble any other design already
registered as to be confounded therewith.
The respondent Minister has been named by the
Governor in Council to administer the Act. The
respondent Commissioner is the official upon
whom that responsibility has, in fact, devolved.
The material provisions of the Act follow:
4. The proprietor applying for the registration of any design
shall deposit with the Minister a drawing and description in
duplicate of the design, together with a declaration that the
design was not in use to his knowledge by any other person than
himself at the time of his adoption thereof.
5. On receipt of the fee prescribed by this Act in that behalf,
the Minister shall cause any design for which the proprietor has
made application for registry to be examined to ascertain
whether it resembles any other design already registered.
6. The Minister shall register the design if he finds that it is
not identical with or does not so closely resemble any other
design already registered as to be confounded therewith; and he
shall return to the proprietor thereof one copy of the drawing
and description with the certificate required by this Part; but he
may refuse, subject to appeal to the Governor in Council, to
register such designs as do not appear to him to be within the
provisions of this Part or any design that is contrary to public
morality or order.
The subject matter of the application is
described as a design for a tire. It appears, in fact,
to relate only to the tread. The applicant asserts its
proprietorship. While the term "design" has not
been defined by legislation, the evidence is that "at
least several hundred" registrations directed to tire
treads have been effected under the Act. There is
no apparent question of public morality or order
involved.
The examiner charged with processing the
application refused to continue until provided with
"complete answers" to the following questions.
I. What is the purpose of each element of the design?
2. Identify the visual features if any which the design has
beyond those necessary to enable it to fulfil its purpose?
3. Does the article have any utilitarian advantages over prior
articles intended for the same purpose? If so, what are those
advantages?
4. Does the shape of the article result in any advantages in the
apparatus or methods used in manufacturing the article?
5. Have any patent applications been filed or patents issued for
the article in question? If so, copies should be provided (to be
kept in confidence if the document is a pending patent
application).
6. Is there any advertising or promotional material in respect
of the article? If so, such material should be submitted.
The shortcomings of this particular Act have
been the subject of judicial comment for a long
time and I do not propose to add to that body of
literature. Referring to it over a half century ago,
the President of the Exchequer Court said that the
legislation
... is difficult of definite ascertainment or construction. It is a
piece of legislation that seems flimsy and incomplete, ill adapt
ed for its intended purposes, and is seriously in need of
amendment.'
It has yet to be amended.
The questions raised by the examiner, other
than number 6, appear to be grounded in jurispru
dence dealing with whether what had been regis
tered was a proper subject matter for registration
Clatworthy & Son Limited v. Dale Display Fixtures Lim
ited [1928] Ex.C.R. 159 at 162.
at all. That issue has been variously raised in
adversary proceedings where expungement of an
entry has been sought either directly 2 or as a
defence in an action for infringement.' The vexing
question was most exhaustively dealt with by Jack-
ett P., as he then was, in Cimon Limited v. Bench
Made Furniture Corporation. 4 A perusal of that
judgment makes it abundantly clear that the ques
tion is not necessarily readily answered.
The sixth question apparently is directed to the
initial words of subsection 14(1) of the Act:
14. (1) In order that any design may be protected, it shall
be registered within one year from the publication thereof in
Canada, and, after registration, the name of the proprietor
shall appear upon the article to which his design applies by
being marked, if the manufacture is a woven fabric, on one end
thereof, together with the letters "Rd." and, if the manufacture
is of any other substance, with the letters "Rd." and the year of
registration at the edge or upon any convenient part thereof.
It has been held that
"Publication" means the date on which the article in ques
tion was first offered or made available to the public.. .. 3
Subsection 14(1) is cast in terms that provide a
defence to an infringement action rather than a
bar to registration. That, in its practical result in
so far as an outdated design is concerned, may be
a distinction without a difference but, in my view
of the registration process, it is a significant dis
tinction. I note that neither the Act nor the
Regulations 6 call for an applicant to disclose the
date of publication, if it has occurred, in his
application. If the subject application is typical, it
is not the practice to refer to publication at all.
The issue is whether, under the Act, the Minis
ter is authorized to make the determination that
the design is or is not a proper subject matter for
registration and whether it had been published
more than a year before. In my view, he is not so
2 E.g. Canadian Wm. A. Rogers, Limited v. International
Silver Company of Canada, Limited [1932] Ex.C.R. 63.
3 E.g. Kaufman Rubber Company, Ltd. v. Miner Rubber
Company Limited [1926] Ex.C.R. 26.
4 [1965] Ex.C.R. 811.
Ribbons (Montreal) Ltd. v. Belding Corticelli Ltd. [1961]
Ex.C.R. 388 at 402.
6 The Industrial Designs Rules, P.C. 1954-1853, SOR Cons.
1955, 1975.
authorized. Certainly, he is not expressly required
to do so.
If the Minister refuses registration, the appeal
from that refusal lies to the Governor in Council
under section 6. If he registers a design that, for
some reason, ought not to have been registered, the
authority to expunge lies in this Court under sec
tion 22. It is, I think, obviously to be preferred that
questions such as whether a design is a proper
subject matter of registration or whether and when
it was published be finally disposed of in a conven
tional forum. Without suggesting it could not be
done, I have some difficulty envisaging the
mechanics of the Governor in Council dealing with
the appeal in, for example, the Cimon case, had it
ensued upon the Minister's determination that the
design of the sofa in issue was not a proper subject
matter of registration.
The certificate that issues upon registration is
prima facie, not conclusive, evidence of compli
ance with the Act. The registration is valid for, at
most, ten years. Finally, section 28 provides:
28. Where any industrial design in respect of which applica
tion for registry is made under this Act is not registered, all fees
paid to the Minister for registration shall be returned to the
applicant or his agent, less the sum of two dollars, which shall
be retained as compensation for office expenses.
Parliament envisaged $2 as compensation for the
Minister's office expenses in the processing of an
unsuccessful application. Even taking account of
inflation, that was not a great deal of money when
Parliament prescribed it.
The whole scheme of the Act is simply not
consistent with the assumption by the Minister of
a duty to undertake an elaborate, extensive and
costly inquiry in the processing of an application.
Parliament intended that he limit his examination
to the matters expressly required by sections 4, 5
and 6. The questions posed by the examiner have
nothing at all to do with any of the matters with
which the Minister is required to deal in determin
ing whether or not the applicant is entitled to have
the design registered.
Counsel for the respondents argued that the
order sought was not within the Court's jurisdic
tion to grant. He relied on subsection 22(1) of the
Act:
22. (1) The Federal Court of Canada may, on the informa
tion of the Attorney General, or at the suit of any person
aggrieved by any omission, without sufficient cause, to make
any entry in the register of industrial designs, or by any entry
made without sufficient cause in any such register, make such
order for making, expunging or varying any entry in any such
register as the Court thinks fit; or the Court may refuse the
application.
He also relied on paragraph (7) of Rule 702 of the
Rules of Court, the only other reference to the Act
in Rule 702 being the reference in paragraph (2).
Rule 702. ...
(2) Proceedings under section 23 of the Industrial Design
and Union Label Act shall be instituted by originating notice of
motion or petition.
(7) An application to the Court under one of the statutes
referred to in this Rule other than those to which reference has
been specially made in this Rule shall be instituted by state
ment of claim or declaration.
The name of the Act has been changed, apparently
in the process of the 1970 statute revision rather
than by explicit amendment. This is not a proceed
ing under section 23.
The refusal to process the application that is in
issue is not a decision from which an appeal may
be taken under subsection 22(1) of the Act, even
assuming that an "omission ... to make any entry
in the register" embraces the refusal of an applica
tion to register a design. That assumption is highly
questionable in view of the right of appeal to the
Governor in Council provided in section 6. Be that
as it may, a refusal to process an application does
not fall within the terms of subsection 22(1).
As to Rule 702, this is not a proceeding under
the Industrial Design Act; it is a proceeding under
section 18 of the Federal Court Act.' Continental
Oil Company v. Commissioner of Patents,' in
which the Court, with manifest reluctance, found
itself without jurisdiction to issue mandamus in a
trade mark matter, antedated the enactment of
section 18 and is, in my view, effectively overruled
by the statute on the point. Its dicta is, however,
helpful in its indication of the appropriate limits of
R.S.C. 1970 (2nd Supp.), c. 10.
8 [1934] Ex.C.R. 118.
such an order, assuming the jurisdiction to make
it.
The respondents are, by definition, a federal
board, commission or other tribunal in the execu
tion of their duties under the Act. This Court has
jurisdiction to entertain the proceeding in the form
it was brought and to make the order sought.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.