John McKeown's Monthly Mailer

June 2014

No more hoping for good weather just the final installment about industrial designs.

Actions for Infringement

An action for infringement of a registered design may be brought in any court of competent jurisdiction in Canada by the proprietor of the design. In addition, an exclusive licensee of any right in the design, subject to any agreement between the proprietor and the licensee, may initiate an action. However, the proprietor of the design must be a party to such an action.

The Federal Court has concurrent jurisdiction to hear and determine an action for the infringement of an exclusive right; and any question relating to the proprietorship of a design or any right in a design.

Remedies

In any proceeding for infringement, the court may make such orders as the circumstances require, including orders for relief by way of injunction and the recovery of damages or profits, for punitive damages, and for the disposal of any infringing article or kit. All the remedies typically available in an action claiming infringement can be sought.

Defences

In addition to the usual defences to an action for infringement, the validity of the registration of the design may be attacked without bringing proceedings for expungement.

Claims of invalidity are very common. A claim may be asserted on the basis that:

(a) the design is not the proper subject-matter for registration;

(b) the design was published in Canada or elsewhere more than one year prior to the application for registration;

(d) the registered proprietor was not the author of the design.

In addition, it may be alleged that the plaintiff is not entitled to any remedy, other than an injunction, if the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered. However, this defence is not available if the plaintiff has marked the articles to which the registration relates as required by the Act.

Comment

Industrial design registrations can be helpful but in some cases it can be difficult to enforce the rights associated with the registration.

Trademark Reform

Bill C-31

We dealt with the amendments last month. But the provisions which allow an applicant for a trademark to obtain a registration without any requirement to declare use of the trademark in Canada or anywhere else is a significant problem. There are concerns with respect to the potential negative impact that such changes will have on the Canadian trademark system.

The Canadian IP community has come together to explain to the government the serious disadvantages these provisions will cause. Unfortunately 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.

The GSNH Intellectual Property e-newsletter

The most recent edition of the e-newsletter was published on April 3, 2014. You can review it by clicking here. The next edition will be published on June 11, 2014.

If you would like to subscribe to the e-newsletter you can email your request with the subject line "IP N."

John S. McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, ON, M5G 1V2

mckeown@gsnh.com

Direct Line: (416) 597-3371

Fax: (416) 597-3370

www.gsnh.com

These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.