A-170-79
Commissioner of Patents and the Minister of
Consumer and Corporate Affairs (Appellants)
(Respondents)
v.
Goodyear Tire & Rubber Company (Respondent)
(Applicant)
Court of Appeal, Pratte, Ryan and Le Dain JJ.—
Ottawa, March 26 and 30, 1979.
Patents — Industrial design Prerogative writs — Man-
damus — Appeal from decision of Trial Judge granting
mandamus on application requiring registration of design pur
suant to Industrial Design Act — Mandamus application
brought following examiner's request for supplementary infor
mation and his rejection of submission that this request be
withdrawn — Trial Judge accepting argument that registra
tion only be refused because of design's being identical with or
closely resembling another design already registered so as to
be confounded with it — Whether or not application for
mandamus should be rejected — Industrial Design Act, R.S.C.
1970, c. I-8, ss. 3, 4, 5, 6, 7.
This is an appeal from a judgment of the Trial Division
directing the issue of a writ of mandamus requiring the two
appellants, who are responsible for the administration of the
Industrial Design Act to register under that Act the design
submitted by the respondent "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." An
examiner from the Commissioner of Patents' office had
requested supplementary information from respondent before
making his determination as to registration and rejected its
submissions that this request be withdrawn. The Trial Judge
upheld respondent's argument that the only ground on which
registration of a design could be refused was that it was
identical with or closely resembled another design already
registered.
Held, the appeal is allowed.
Per Pratte J.: Respondent, when it applied for a mandamus
against the appellants, was seeking to enforce the duty imposed
on the Minister by section 6 of the Act. The duty imposed by
that section, however, relates only to industrial designs which
are the only designs that are registrable under the Act; it does
not relate to every design that may be submitted for registra
tion. When an application is made for registration of a design,
the Minister must determine, first, whether the design in
question is an industrial design, and, second, whether it is an
industrial design that he has a duty to register pursuant to
section 6. The purpose of the questions put by the examiner to
the respondent was to obtain information that would enable
him to determine whether the respondent's design was an
industrial design since a design which is not to be applied to the
ornamentation of an article is not an industrial design within
the meaning of the Act. A design which is not, by reason of its
purely functional character, an industrial design is not a design
"within the provisions of this Part". The registration of such a
design may be refused by the Minister.
Also, per Le Dain J.: The qualities required for valid regis
tration have been deduced by judicial affirmation from the
language of the Act. It was not intended that the Minister
should be obliged to register designs which in his opinion are
not designs as defined by judicial decisions which speak of what
may and may not be registered. What is contemplated is not
merely the application of the explicit, formal requirements of
the Act but the exercise of some judgment which is what the
question of the proper subject matter is, as determined in the
light of judicial decisions. It is a power of refusal which the
Minister may or may not exercise according to his judgment
and necessarily implies the power or right to satisfy himself by
examination that a design is a proper subject matter for
registration. The appeal to the Governor in Council is not the
only recourse open to applicant from a refusal to register. Since
the latter words of section 22 of the Industrial Design Act
clearly confer a jurisdiction to expunge the registration of a
design that is not properly the subject matter for registration,
the former words confer a jurisdiction to order registration of a
design which has been refused registration on such a ground.
APPEAL.
COUNSEL:
H. Erlichman and Leslie Holland for appel
lants (respondents).
D. F. Sim, Q.C. and John Macera for
respondent (applicant).
SOLICITORS:
Deputy Attorney General of Canada for
appellants (respondents).
Donald F. Sim, Q. C., Toronto, for respondent
(applicant).
The following are the reasons for judgment
delivered orally in English by
PRATTE J.: This is an appeal from a judgment
of the Trial Division [[1979] 2 F.C. 401] directing
the issue of a writ of mandamus requiring the two
appellants, who are responsible for the administra
tion of the Industrial Design Act, R.S.C. 1970, c.
I-8, to register under that Act the design submit
ted by the respondent "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."
On June 14, 1978, the respondent applied under
the Industrial Design Act' for the registration of a
design for a tire. That application was considered
by an examiner from the Commissioner of Patents'
office who wrote the applicant on July 6, 1978, in
the following terms:
The application cited above has been reached for examination.
Applications for an industrial design that pertain merely to
functional or utilitarian features of an article, and do not
indicate any evident visual features are not registrable.
From what is disclosed in the drawings the design looks as
though it may be entirely utilitarian and without visual appeal.
In order to assist the examiner, the applicant is requested to
answer the following questions, so that a proper evaluation may
be made as to whether the design is solely functional or whether
there are visual features which merit registration.
1. What is the purpose of each element of the design?
' Sections 3 to 7 of that Act are relevant to the decision of
this case. They read as follows:
3. The Minister shall cause to be kept a book called the
Register of Industrial Designs for the registration therein of
industrial designs.
4. The proprietor applying for the registration of any
design shall deposit with the Minister a drawing and descrip
tion 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.
7. (1) On the copy of the drawing and description
returned to the person registering, a certificate shall be given
signed by the Minister or the Commissioner of Patents to the
effect that such design has been duly registered in accord
ance with this Act.
(2) Such certificate shall show the date of registration
including the day, month and year of the entry thereof in the
proper register, the name and address of the registered
proprietor, the number of such design and the number or
letter employed to denote or correspond to the registration.
(3) The said certificate, in the absence of proof to the
contrary, is sufficient evidence of the design, of the original
ity of the design, of the name of the proprietor, of the person
named as proprietor being proprietor, of the commencement
and term of registry, and of compliance with this Act.
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.
Further action to register this design can only be taken upon
receipt of complete answers to the above questions, and an
indication that the design applied for contains visual features
beyond those necessary for the article to fulfil its function.
Failure to reply to this action on/or before January 8, 1979,
will result in this application being placed in the inactive files.
On October 30, 1978, the respondent's solicitors
wrote to the Commissioner of Patents asking him
to withdraw that request for additional informa
tion which, it was submitted, the examiner had no
authority to make since his sole duty, under the
Act, is to determine whether the design submitted
for registration "is not identical with or does not so
closely resemble any other design already regis
tered as to be confounded therewith".
The examiner rejected the respondent's submis
sions and reiterated his request for supplementary
information. The respondent then made the
application for a writ of mandamus which was
granted by the judgment under attack.
It should be stressed at this point that the
respondent's grievance against the examiner was
neither that the examiner had failed to decide in
the light of the material submitted to him whether
or not to register the design, nor that the validity
of the registration of a design could not be affected
by its purely functional character. 2 The respon
dent's position was merely that the examiner had
erred when he had claimed to have the right to
refuse to register the respondent's design on the
ground that it was purely functional and did not
2 Counsel for the respondent expressly acknowledged during
the hearing of this appeal that the registration of a design
which is purely functional and has no ornamental features is
invalid.
involve any ornamental features. According to the
respondent, the only ground on which the registra
tion of a design could be refused was that it was
identical with or closely resembled another design
already registered. That position was upheld by
the Judge of First Instance for reasons that he
expressed as follows [at pp. 404-405]:
The issue is whether, under the Act, the Minister is author
ized 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
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
section 22. It is, I think, obviously to be preferred that ques
tions 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 conventional forum. Without suggesting it
could not be done, I have some difficulty envisaging the me
chanics 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 compliance 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
application for registry is made under this Act is not regis
tered, 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 determining whether or not the applicant is entitled to have
the design registered.
I regret to say that these reasons do not convince
me. I am rather of the view that the appeal should
succeed and that the respondent's application for
mandamus should be rejected.
When it applied for a mandamus against the
appellants, the respondent was seeking to enforce
the duty imposed on the Minister by section 6 of
the Act, the first part of which reads as follows:
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;
The duty imposed by that section, however, relates
only to industrial designs which are the only
designs that are registrable under the Act (see
section 3); it does not relate to every design that
may be submitted for registration. - When an
application is made for registration of a design, the
Minister must, in my view, determine, first, wheth
er the design in question is an industrial design,
and, second, whether it is an industrial design that
he has the duty to register pursuant to section 6.
As I understand the questions put by the examiner
to the respondent, their purpose was to obtain
information that would enable him to determine
whether the respondent's design was an industrial
design since, in my view, a design which is not to
be applied to the ornamentation of an article is not
an industrial design within the meaning of the
Act. 3
This view is confirmed by the last part of section
6 which expressly empowers the Minister to
... 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. 4
A design which is not, by reason of its purely
functional character, an industrial design is not a
design "within the provisions of this Part". The
registration of such a design may, therefore, be
refused by the Minister.
For these reasons, I would allow the appeal, set
aside the decision of the Trial Division and dismiss
the respondent's application with costs both in this
Court and in the Trial Division.
* *
3 See Cimon Limited v. Bench Made Furniture Corp. [1965]
1 Ex.C.R. 811 at 830 et seq.
° That part of section 6 has its origin in a pre-confederation
statute of the old Province of Canada, chapter 21 of the
Statutes of Canada, 1861. Section 27 of that Act reads as
follows:
27. The said Secretary shall have power to refuse to
register such designs as do not appear to him to be within the
provisions of this Act, as of a thing not intended to be applied
to an article of manufacture, but only as a wrapper, label or
covering, in which an article might be exposed for sale, or
when the design is contrary to public morality or order,
subject, however, to appeal to the Governor in Council.
RYAN J. concurred.
* * *
The following are the reasons for judgment
delivered orally in English by
LE DAIN J.: I agree that the appeal should be
allowed for the reasons given by my brother Pratte
but because of the difficulty I have experienced I
should like briefly to indicate the view that I have
formed of the issue.
The examiner has requested certain information
of the applicant for registration of an industrial
design to determine "whether the design is solely
functional or whether there are visual features
which merit registration" and has indicated that if
the information is not provided the application will
be "placed in the inactive files". The applicant
contends in effect that the Minister is not empow
ered by the Industrial Design Act, R.S.C. 1970, c.
I-8, to refuse to register a design on the ground
that it is solely functional and that he is, therefore,
exceeding his statutory authority in causing the
examiner to make such an inquiry. The applicant
relies particularly, as I understand the thrust of its
argument, on sections 4, 5 and 6 of the Act as
indicating what the Act contemplates as the scope
of the examination to be made and the matters to
be considered by the Minister. Section 4 requires
the applicant to deposit with the Minister "a draw
ing 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'. Sec
tion 5 provides that the Minister "shall cause any
design for which the proprietor has made applica
tion for registry to be examined to ascertain
whether it resembles any other design already
registered". Section 6 provides that 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 confound
ed therewith ...". From these provisions the appli
cant argues that the scope of the examination
contemplated by the Act and the duty of the
Minister are confined to determining whether the
design resembles any other design already regis
tered. But section 6 goes on to provide that the
Minister "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 question, as I see it, is
whether the words "within the provisions of this
Part" contemplate grounds on which the courts
have held that a design is not registrable.
After considerable difficulty I have come to the
conclusion that they must be so construed. The
Act does not contain a definition of industrial
design, but drawing on certain language of the Aët
the courts have affirmed requirements for valid
registration. In Clatworthy & Son Limited v. Dale
Display Fixtures Limited [1929] S.C.R. 429, for
example, the Supreme Court of Canada held that
the provision which is now section 7(3) of the Act
indicated that to be entitled to registration a
design must be original. In Cimon Limited v.
Bench Made Furniture Corporation [1965] 1
Ex.C.R. 811, the Exchequer Court held that sec
tion 11 of the Act indicated that to be entitled to
registration a design must be one that is applied to
the ornamenting of an article. These qualities
required for valid registration have been deduced
from the language of the Act and as such indicate
the kind of designs that are within the provisions
of Part I of the Act which create the right to
registration and the protection afforded by it. I
cannot think it was intended that the Minister
should be obliged to register designs which in his
opinion are not designs as defined by judicial
decisions which speak of what may and may not be
registered. The quotation from In re Clarke's
Design [[1896] 2 Ch. 38, at p. 42], for example, at
page 435 of the Clatworthy case speaks of designs
"which have escaped the vigilance of the comp
troller and been improperly registered". The words
"as do not appear to him" in section 6 suggest that
what is contemplated is not merely the application
of the explicit, formal requirements of the Act but
the exercise of some judgment which is what the
question of proper subject matter is, as determined
in the light of the judicial decisions. It is a power
of refusal which the Minister may or may not
exercise according to his judgment. As such it
necessarily implies in my opinion the power or
right to satisfy himself by examination that a
design is a proper subject matter for registration.
Much was made in argument of the provision in
section 6 of the Act of an appeal to the Governor
in Council as indicating the kind of objection to
registration that must be contemplated. On any
view of the requirements contemplated by the
words "within the provisions of this Part" an
appeal to the Governor in Council on subject
matter of this kind is a curious remedy in this day
and age. But there appears to have been an
assumption that this appeal would be the only
recourse open to the applicant from a refusal to
register. I do not so read the provisions of the Act.
The words "subject to appeal to the Governor in
Council" create a right of appeal but not in lan
guage that would exclude, or even make such an
appeal a condition precedent to the exercise of, the
recourse provided by section 22 of the Act. That
section provides a recourse to the Federal Court
from "any omission, without sufficient cause, to
make any entry in the register of industrial
designs," or from "any entry made without suffi
cient cause in any such register". Since the latter
words clearly confer a jurisdiction to expunge the
registration of a design that is not a proper subject
matter for registration I cannot see why the former
words do not confer a jurisdiction to order regis
tration of a design which has been refused regis
tration on such a ground. It appears to have been
taken for granted by the Exchequer Court in Rose
v. Commissioner of Patents [1935] Ex.C.R. 188
that the recourse provided by what was then sec
tion 45 of the Trade Mark and Design Act, R.S.C.
1927, c. 201 and is now section 22 was the appro
priate recourse for a refusal to register, although it
was held in that case that the recourse could not
be brought by way of motion.
Some stress in argument was also laid on the
requirement in section 14 of the Act that a design
be registered within one year from publication in
Canada as indicating the kind of ground of refusal
to register that must be contemplated by section 6.
I do not find this argument convincing. As much
time, it seems to me, may be consumed by a
refusal to register on the ground that a design so
closely resembles another design as to be con
founded with it, and by the ensuing recourse from
such refusal, as by a refusal to register on the
ground that the design is not an industrial design
within the contemplation of the Act.
In conclusion, then, I am of the opinion that in
causing the examiner to consider whether the
design was purely functional or whether it had
visual features which merit registration the Minis
ter was not exceeding his statutory authority, and
mandamus will therefore not lie to compel him to
consider the application for registration without
regard to this question.
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.