T-1415-96
BETWEEN:
THOMAS & BETTS, LIMITED
Plaintiff
- and -
PANDUIT CORP.,
PANDUIT (CANADA) LIMITED
Defendants
REASONS FOR ORDER
RICHARD, J.:
Nature of the Proceedings
The defendants have brought a motion under Rule 432.3 of the Federal Court Rules for:
| (a) an order for summary judgment dismissing this action, with costs to the defendants of the action and this motion fixed at the high end of column V of the tariff; |
| (b) in the alternative, an order for summary judgment dismissing the plaintiff's cause of action respecting the trade-mark rights alleged to be owned by the plaintiff in an oval shaped cable tie head, with costs of this motion fixed at the high end of column V of the tariff; |
| (c) In the alternative, an order for summary judgment dismissing the plaintiff's cause of action respecting the trade-mark rights alleged to be owned by the plaintiff in the words BARB TIE, with costs of this motion fixed at the high end of column V of the tariff; |
| (d) such further or other order as to this Honourable Court may seem just. |
The grounds for the present motion are:
| 1. The oval shaped cable tie is the preferred embodiment of one or more patents, now expired, and is therefore not subject to trade-mark rights. |
| 2. The plaintiff has alleged trade-mark rights in the words BARB TIE. The plaintiff has made no use of this mark in Canada in association with its wares and therefore cannot assert trade-mark rights to that mark. |
At the opening of the hearing of this motion, the defendants indicated that they would not rely on the following ground raised in the motion:
| The oval shaped cable tie head alleged by the plaintiff to be a trade-mark is functional and therefore not to be accorded trade-mark protection in Canada. |
Statement of Claim
On June 14, 1996, the plaintiff filed the within action against the defendants. In its statement of claim, as amended on August 8, 1996, the plaintiff claims essentially:
| (a) a declaration that the defendants have infringed its unregistered trade-mark consisting of a distinctive oval shape for the head of a cable tie; |
| (b) a declaration that the defendants have infringed its unregistered trade-mark BARB TIE for cable ties; |
| (c) a declaration that the defendants are passing off their wares and business for those of the plaintiff; |
| (d) a permanent injunction prohibiting further acts of infringement and passing off; |
| (e) damages or an accounting of profits, as the plaintiff may elect. |
Nature of the Product
In the construction, telecommunications, and computer industries, amongst others, bundles of cables or wires are lashed, harnessed or secured together by nylon cable ties. Cable ties have a head and a strap. In use, the strap is looped around one or more cables and the end of the strap (the tail) is inserted into, and pulled through, a close-fitting slot in the head of the cable tie. The head and the strap then lock together to form a permanent loop around the cables.
There are billions of cable ties sold by the parties around the world. Cable ties are treated as a commodity item, almost as a consumable, by electrical contractors.
There are two types of cable ties:
| (a) One piece cable ties are made of a single piece of material, typically nylon. There is a pawl located in the slot in the one piece cable tie head. The pawl catches teeth on the cable tie strap so that the strap can be pulled through the cable tie head in one direction only. The pawl and teeth together operate as a ratchet. |
| (b) Two piece cable ties have a metal tongue in the head (typically the rest of the cable tie is nylon as in the one piece cable tie). The metal tongue embedded in the cable tie head permits the strap to be pulled through the slot in the cable tie head in one direction only. The metal tongue digs into the strap when the strap is pulled in the opposite direction. In this way, the strap is locked into position in the head once the cable tie is cinched down around one or more cables. |
It is this second type which is in issue in these proceedings.
The Market
The major competitors in the cable tie market in Canada are Thomas & Betts and Panduit.
Thomas & Betts markets and sells one piece cable ties in Canada under the name TY FAST, and two piece cable ties under the name TY RAP. Panduit makes and sells one piece cable ties in Canada under the name PAN-TY, and two piece cable ties under the name BARB-TY.
All commercially available two piece cable ties sold in Canada have oval shaped heads. Before Panduit introduced its own product, in or about 1994, the only company selling two piece cable ties in Canada was Thomas & Betts (the TY RAP cable ties). Thomas & Betts' two piece cable ties all had oval shaped heads.
One piece cable ties have rectangular or square shaped head.
Thomas & Betts introduced its square-headed one piece cable tie in Canada approximately three years ago under the name TY FAST.
The following summarizes the products of Panduit and Thomas & Betts, and their characteristics:
One/Two Piece Head Shape Brand Name Source
One Piece Square PAN-TY Panduit
One Piece Square TY FAST T & B
Two Piece Oval BARB-TY Panduit
Two Piece Oval TY RAP T & B
| 1. The First Ground: The oval shaped cable tie is the preferred embodiment of one or more patents, now expired, and is therefore not subject to trade-mark rights. |
Expired Patent in Issue
The TY RAP product of Thomas & Betts was subject to Canadian Patent No. 753,010, entitled "Self Clinching Bundling Strap" which issued on February 21, 1967 (the "Thomas & Betts Patent").1 The Thomas & Betts Patent expired in 1984. The invention relates to bundling or tie straps of the character disclosed in United States Patent No. 3,022,557, issued to M. C. Logan and more particularly to a bundling strap of this character which embodies a self-clinching improvement therein.
The figures of the Thomas & Betts Patent show the TY RAP cable tie as a two piece cable tie with an oval shaped head. The claims make no specific reference to an oval head.
It is the simple oval shaped head shown as the preferred embodiment in the figures of the Thomas & Betts Patent that Thomas & Betts chose to market and now claims to be a trade-mark, as an unregistered distinguishing guise.
The Thomas & Betts Patent describes the cable tie of the patent in the following language:
| It is an object of the invention to provide a plastic bundling strap of the character described which is adapted to be looped about a plurality of elements and drawn taut thereon in self-clinching relation without the use of a special tool or the like. |
...
| A further object of the invention is to provide a plastic bundling strap which is extremely simple in construction, inexpensive to use, and highly efficient for the purpose intended. |
| ... |
| With the above and other objects in view, the invention resides in the novel construction, combination, and arrangement of parts, the novel features of which are set forth with particularity in the appended claims, the invention itself, however, both as to its organization and method of operation, together with additional objects and advantages thereof, being best understood from the following description of a specific embodiment thereof, when taken in connection with the accompanying drawing. |
| ... |
| The "head-end portion 24 of the strap S terminates in an oval shaped clinching eyelet 26". |
...
| The strap presents "a somewhat oval configuration in cross-section". |
...
| The configuration and cross-sectional area of the body portion 10 of the strap S, and the configuration and area of the aperture 30, in the eyelet portion 26 are substantially equal but reversed with respect to each other to provide for the looping of the strap body portion 10 upon itself in reverse relation for the purpose described". |
The claims of the Thomas & Betts Patent require, inter alia, a "self-clinching bundling strap comprising a head-end portion, a tapered tail-end portion and a body portion therebetween...".
Patent Specifications
The Patent Act requires that
| The specification of an invention must, |
| (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor; |
| (b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art of science to which it pertains, or with which it is most |
| closely connected, to make, construct, compound or use it.2 |
The patent specification includes the title of the invention, a full description of the invention to enable a person reasonably skilled in the art to put the invention into practice, the drawings and a distinct statement of the invention claimed, which may comprise one or more separate claims.
The inventor has the duty, with the fullest bona fides, to describe the best way known to him/her of carrying out the invention and to leave no doubt as to what constitutes the invention which he/she claims as his/her monopoly. Drawings form one of the simplest and most effective ways of describing the manner in which the invention is to be performed. The specification must also set forth a detailed description of the preferred embodiments of an invention. The disclosure must describe all the characteristics of the invention defined in the claims. The claim or claims must define distinctly and in explicit terms the subject matter of the invention for which an exclusive property or privilege is claimed.
The Supreme Court of Canada, in the Noranda3 case, considered the requirements for the specification of a patent as follows:
| Two things must be described in the disclosures of a specification, one being the invention, and the other the operation or use of the invention as contemplated by the inventor, and with respect to each the description must be correct and full. The purpose underlying this requirement is that when the period of monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application. |
The Supreme Court of Canada looked at the statutory scheme again in the Consolboard4 case and used the following language to describe the purpose behind the specification in a patent:
| Section 36 [now s. 27] of the Patent Act lies at the heart of the whole patent system. The description of the invention therein provided for is the quid pro quo for which the inventor is given a monopoly for a limited term of years on the invention. As Fox points out in Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. (1969), p. 163, the grant of a patent is in the nature of a bargain between the inventor on the one hand and the Crown, representing the public, on the other hand. The consideration for the grant is twofold: |
| ... first, there must be a new and useful invention, and secondly, the inventor must, in return for the grant of a patent, give to the public an adequate description of the invention with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired.5 |
After reviewing the Canadian Patent legislation commencing with the Canadian Patent Act of 1869, which followed generally the United States statute of 1836, the Supreme Court noted that there was established a distinction between the "claims" and the body of the specification:
| In essence what is called for in the specification (which includes both the "disclosure", i.e., the description portion of the patent application, and the "claims") is a description of the invention and the method of producing or constructing it, coupled with a claim or claims which state those novel features in which the applicant wants an exclusive right. The specifications must define the precise and exact extent of the exclusive property and privilege claimed. |
| Section 36(1) seeks an answer to the questions: "What is your invention?: How does it work?" With respect to each question the description must be correct and full in order that, as Thorson P. said in Minerals Separation North American Corp. v. Noranda Mines, Ltd. (1947), 12 C.P.R. at p. 102 at p. 111, [1947] Ex. C.R. 306 at p. 316, Fox Pat. C. 130: |
| ... when the period of the monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application.6 |
In Catnic,7 Lord Diplock said:
| My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. |
Therefore, the claims alone define the statutory monopoly.8 The effect of the claims is not to extend but to limit the invention described in the specifications.
The Supreme Court of Canada, in the Pioneer9 case, has also characterized the granting of a patent as follows:
| In Canada the granting of a patent means the kind of contract between the Crown and the inventor in which the latter receives an exclusive right to exploit his invention for a certain period in exchange for complete disclosure to the public of the invention and the way in which it operates... |
| The exclusive exploitation of a patent, including the right to grant licenses to exploit, rewards the inventor's intellectual effort while at the same time allowing better technical development, in particular by eliminating the practice of commercial secrecy. |
| The history of Canadian legislation in this area demonstrates that the obligation to disclose an invention has always been regarded as a prerequisite to the granting of a patent... |
| Section 36(1) was enacted so competitors could know the limits within which they should avoid infringing the subject of the invention and be aware of their freedom to manoeuvre when they work in an area related to that of the patentee. |
| The applicant must define the nature of the invention and describe how it is put into operation... The description must be such as to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure...and once the monopoly period is over, to use the invention as successfully as the inventor could do at the time of his application. |
More recently, the British Columbia Court of Appeal10 considered the requirement as set out in the Patent Act as follows:
| When considering the legislative purpose underlying the Patent Act, it is useful to keep in mind the description of a patent given by Lord Dunodin in Pope Appliance Corp.v. Spanish River Pulp and Paper Mills, Ltd., [1992] A.C. 269 (at p. 281): |
| ... a patent represents a quid pro quo. The quid to the patentee is the monopoly; the quo is that he presents to the public the knowledge which they have not got. |
Therefore, the inventor, when granted by law the exclusive right to exploit the invention for a certain period, must, in exchange, make a full disclosure to the public of the invention and the way it operates. When the period of the monopoly expires, the public must be able to make the same successful use of the invention as the inventor could do.
The preferred embodiment or preferred practice found in the specification consists of the most appropriate use of the invention. It instructs on how to capitalize on the invention by giving a full description of the best way of using or putting into operation the inventive idea. The claims, on the other hand, set forth the breadth of the inventor's monopoly and define the boundaries of patent protection. They are the embodiments of the invention in which an exclusive property or privilege is claimed.
The inclusion in a patent application of a preferred embodiment does not limit the range of physical entities which are covered by the patent to that described in the embodiment; the range continues to be delimited by the claims.11
As stated by the Federal Court of Appeal in the Dableh12 case:
| It is equally clear that where the words used in the claims are clear and unambiguous, they must not be narrowed or limited to a patent's preferred embodiment. |
The plaintiff's expired patent does not specify an oval head in any of the claims but the preferred embodiment disclosed in the specifications and the accompanying figures do describe an oval head.
Position of the Parties
The plaintiff (the responding party) claims that it is established law that patent protection and trade-mark or trade dress rights coexist independently of one another. Counsel for the plaintiff does concede that enforcement of trade-mark rights will not be permitted where such enforcement will result in artificially extending the statutory monopoly conferred by the Patent Act.13
However, counsel for the plaintiff asserts that the oval shape of the head is not claimed as novel in the expired patent. According to counsel, after the expiry of the patent in 1984, any cable tie manufacturer was free to manufacture cable ties with a self-clinching barb as claimed in the expired patent, but could not configure or market its cable ties in a manner which would infringe other intervening rights of the plaintiff which are wholly independent of patent rights, in this case, the plaintiff's trade-mark rights in its distinctive oval-shaped head of a cable tie.
According to counsel for the plaintiff, the real question to be asked is not whether the distinctive oval shape is disclosed in the patent, as a "preferred embodiment" or otherwise, but whether such oval shape is essential for competitors to practice the invention which they were prohibited from practicing during the life of the patent. This rule was articulated by Judge Shadur in the recent American case of Zip Dee Inc. v. Dometic Corp.:14
| What must be asked (...) is whether the granting of a trademark (and thus of an indefinite monopoly) on a product configuration that is claimed or otherwise disclosed as part of an invention covered by a utility patent would prevent the invention itself from being copied and used by the public. |
In Zip Dee, it was decided that a product configuration which was described in a dependent claim of an expired patent was not barred from trade-mark protection. A fortiori this should be the case when the product configuration was merely disclosed in the specification.
The defendants' first ground cannot therefore succeed without a demonstration, the burden of which rests on the defendants, that the plaintiff's distinctive product configuration was necessary to practice the invention or, to use the language of Zip Dee, to compete effectively in the cable tie market.
Counsel for the plaintiff also cited the following U.S. decisions:
| - Kohler Co. v. Moen Incorporated, 12 F.3d. 632 (7th. Cir. 1993), Coffey C.J. |
| - Qualitex Company v. Jacobson Products Co., Inc., 131 L.Ed. 248 (U.S. S. Ct. 1995) Breyer, J. |
| - Application of Mogen David Wine Corp. 328 F.2d 925 (C.C.P.A. 1964) Almond J. |
| - Clamp Manufacturing Co., Inc. v. Enco Manufacturing Co., Inc. 870 F.2d 512 (9th Cir. 1989) Farris C.J. |
| - Nabisco Brands, Inc. v. Conusa Corp. 722 F.Supp 1287 (M.D.N.C. 1989) Bullock D.J. |
- Ferrari S.P.A. Esercizio v. Roberts 944 F.2d 1235 (6th. Cir. 1991) Ryan C.J.
| - Hubbell Incorporated v. Pass & Seymour, Inc. 883 F.Supp 955 (S.D.N.Y. 1995) Sweet D.J. |
| - Dogloo, Inc. v. Doskocil Manufacturing Co., Inc. 893 F.Supp 911 (C.D.CaL. 1995) Collins D.J. |
| - Kransco Manufacturing, Inc. v. Hayes Specialities Corp. 1996 U.S. App. LEXIS 2459 (Fed. Cir. 1996) Archer C.J. |
| - Mechanical Plastics Corp, Ltd. V. Tital Technologies, Inc. 823 F.Supp 1137 (S.D.N.Y. 1993) Brieant D.J. |
The defendants (the moving parties) claim that if the plaintiff is successful in asserting trade-mark rights as claimed then it will be impossible for anybody to utilize the invention precisely in the manner in which the plaintiff has utilized it during the time when the patent existed. The full extent of the invention will not be able to be used by the public. The defendants contend that the public is at liberty to follow the directions which are set out in the expired patent's specifications.
Counsel for the defendants relies on the following passage from Fox:15
| A manufacturer cannot be held guilty of passing off if he manufactures goods in accordance with an expired patent and the only similarity between the rival goods lies in the appearance of the goods so manufactured and the application to them of the name by which the manufactured goods had become known. |
Counsel also relies on the statement of Thorson P. in the Noranda case16 which was later quoted with approval in the Supreme Court of Canada17
| ... when the period of the monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application. |
Counsel for the defendants relies on a number of U.S. decisions. In particular, the U.S. Federal District Court18 has considered the issue of whether an expired U.S. patent disclosing the Thomas & Betts two-piece cable tie affects the rights of Thomas & Betts to claim trade-mark rights in the shape of the cable tie head. The U.S. Court held that "the right to copy arising from the Patent Act entitles Panduit to copy the oval headed cable tie disclosed in the Schwester patent without fear" of violation of the U.S. federal trade-mark statute.
The U.S. decision held that:
| ...The public expected to receive the benefits of a competitive cable tie market after granting T & B a seventeen-year monopoly. |
| Anything less than a strict rule that the best mode disclosed in a patent can be copied would defeat these expectations. If a prospective competitor must face the threat of Lanham Act litigation for 'slavishly copying' the invention, this would seriously undermine the Patent Act.19 |
In considering whether the right to use the preferred embodiment ought to be restricted to those aspects of the preferred embodiment which are proven to be functional, the U.S. Court held that:
| ...[T]he adoption of a functionality test would present the same problems and concerns. Functionality can become a complicated fact issue... A bright line test which permits 'slavish copying' of the 'best mode' invention disclosed in the expired utility patent best serves the public's interest as expressed by Congress in the Patent Act, while still preserving Lanham Act protection for methods of marketing the product so as to prevent sources of confusion.20 |
The decision in the U.S. Court was based on earlier U.S. Supreme Court decisions which have variously held as follows:
| When [a] patent expires the monopoly created by it expires, too, and the right to make the article -- including the right to make it in precisely the shape it carried when patented -- passes to the public.21 |
| It is self evident that on the expiration of a patent the monopoly granted by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent.22 |
| By the force of the patent laws not only is the invention of a patent dedicated to the public upon its expiration, but the public thereby becomes entitled to share in the good will which the patentee has built up in the patented article or product through the enjoyment of his patent monopoly. Hence we have held that the patentee may not exclude the public from participating in that good will or secure, to any extent, a continuation of his monopoly by resorting to the trademark law and registering as a trademark any particular descriptive matter appearing in the specifications, drawings or claims of [an] expired patent, whether or not such matter describes essential elements of the invention or claims.23 |
| [The inventor] may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but upon the expiration of that period, the knowledge of the invention enures to the people, who are thus enabled without restriction to practice it and profit by its use.24 |
Counsel for the defendants also drew attention to the following passage in the Shredded Wheat case:25
| Some further observations their lordships think it desirable to make. The decision has been reached without basing it specifically upon the existence of patents which have expired. Their lordships, however, find it difficult to conceive that a manufacturer could in such a case be held guilty of passing off, if he manufactured the good in accordance with the expired patents... |
Finding
Federal patent and trade-mark laws have co-existed in Canada for many decades. The protection offered by them can exist together.
However, a patentee cannot assert trade-mark rights to the very way an expired patent directs the public to make the invention. In my view, there are good policy reasons not to extend the monopoly of the patent in that manner or to compel the public, by experimentation, to practice the invention in a different manner than the one disclosed in the specifications. To require a manufacturer in these circumstances to experiment with a different configuration or to establish that the configuration is primarily functional is to narrow the use which can be made of the invention disclosed in an expired patent.26
In the present case, the invention is a plastic bundling strap of the character described which embodies a self-clinching improvement. The head is an essential element of the invention. The oval configuration of the head is described by the inventor in the patent application as being the preferred embodiment. The figures of the patent show the cable tie as a two piece cable tie with an oval shaped head. The patentee has said that the successful use of the invention has an oval head. It is this oval shaped head that the plaintiff asserts is now a distinguishing guise which cannot be copied.
We are not concerned here with patent infringement but with the use of an expired patent where the public is entitled to manufacture the goods in accordance with the expired patent. The patentee cannot rely on any distinctiveness its dress up may have acquired during the period of the monopoly to deny the public the full use of the invention disclosed in its expired patent. The patentee can rely on other ways to use trade-marks to distinguish the source of its goods.
The reasoning of Mr. Justice Peterson in the case of Moore's Modern Methods27 is instructive:
| It is proposed that a mark should be registered which, in fact, shows the perforations which have been in use and have been effected by means of the invention which is protected by the Patent. |
| The Patent comes to an end in the year 1920. What will be the position then if this present Application is granted? Admittedly one result will be that it will be impossible for anybody to utilise the invention precisely in the manner in which the present Applicants have utilised it during the time when the Patent existed. In other words, it will be open to the public at large to utilise the invention, provided they do not make orifices in the loose leaves of the precise character which is shown on the present Application. That appears to me to mean this, that the public, on the expiration of the Patent, are not to be at liberty to utilise the invention to the full extent and in precisely the same way as the Patentees were entitled to utilise it while the Patent remained, and I think for that reason the present Application ought to fail, and I accordingly refuse it. |
I find that the U.S. authorities cited by counsel for the defendants reflect the considerations found in Fox's text and the Noranda case in Canada, as well as the Shredded Wheat case and the Moore's case in the U.K.
I am satisfied that the only genuine issue on this claim is a question of law since none of the relevant facts are in dispute. Under Rule 432.3(3) a judge may determine the question and grant summary judgment accordingly. It would not be unjust to decide this issue by way of summary judgment.
Accordingly, I grant the motion for summary judgment on this claim.
| 2. The Second Ground: The plaintiff has alleged trade-mark rights in the words BARB TIE. The plaintiff has made no use of this mark in Canada in association with its wares and therefore cannot assert trade-mark rights to that mark. |
The allegations giving rise to this claim are to be found in paragraphs 19 to 23 and 27 to 32 of the Statement of Claim.
The Federal Court of Canada has jurisdiction in with respect to passing off only in so far as the passing off relates to trade-marks.28
Use of a trade-mark is defined in sections 2 and 4 of the Trade-marks Act R.S.C. 1985 c. T-13, as amended. Any conclusion as to whether any given set of facts constitutes use is a question of law. This is not for an affiant. An affiant ought to establish facts from which a finding of use can follow.29
The defendants (the moving parties) allege that there is no evidence of trade-mark use of the words BARB TIE. It is conceded by the plaintiff that there is no registration for BARB TIE and no evidence of any written use of the words in association with cable ties in Canada or elsewhere. However, counsel for the plaintiff submits that there is evidence of verbal use and that such verbal use, even in the absence of written use, can establish use and distinctiveness.
In a summary judgment motion, it is incumbent on the responding party to put forth its best case. The affidavits produced by the plaintiff (the responding party) do not provide evidence of trade-mark use. Only one of the plaintiff's witnesses (Reginald Clark) indicated that he had used the term "barb tie" in reference to the plaintiff's cable ties, or heard the term used by others. However, he was unable to remember even one specific instance on which any person had used the term "barb tie" to refer to one of the plaintiff's cable ties.
Although there were five affidavits of electrical contractors from across Canada who actually used the plaintiff's cable ties, none of those affiants gave evidence that they called the plaintiff's cable ties "barb ties".
Counsel for the defendants relied on the decision of Pinard J. in Playboy Enterprises Inc. v. Germain (No. 1)30 where he found that a trade-mark must be something that can be seen. I need not base my decision on that finding since I have concluded that there are no facts showing that there is a genuine issue for trial.
Counsel for the plaintiff relied on Wadlow's statement that it is possible for a term to become distinctive by virtue of spontaneous public adoption.31 Even if I were to accept this principle as constituting evidence of use for trade-mark purposes in Canada, there is no evidence on this motion that the public knew the term "barb tie" and associated it with the plaintiff's product.
I am satisfied that there is no genuine issue for trial with respect to this claim and accordingly I grant the motion for summary judgment on this claim.
There will be an order dismissing this action.
The defendants are entitled to a single set of costs of the motion in accordance with Column III of Tariff B.
_____________________
Judge
Ottawa, Ontario
April 23rd, 1997
__________________1 Also described as the Schwester patent.
2 R.S.C. 1985, c. P-4, as amended, s. 27(3) [formerly s. 34 and formerly s. 36].
3 Noranda Mines Ltd v. Minerals Separation North American Corp. (1949), 12 C.P.R. 102 (S.C.C.) at 111.
4 Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. (1981), 56 C.P.R. (2d) 145.
5 Supra at 154-155, per Dickson J.
7 Catnic Components Limited and another v. Hill & Smith Limited, [1982] R.P.C. 183 at 242-243.
8 AT & T Technologies, Inc. v. Mitel Corp. (1989), 26 C.P.R. (3d) 238 at 249.
9 Pioneer Hi-Bred Ltd. v. Commissioner of Patents (1989), 25 C.P.R. (3d) 257 (S.C.C.) at 266-268.
10 Forget v. Specialty Tools of Canada Inc. (1995), 62 C.P.R. (3d) 537, (B.C.C.A.) at 541.
11 Slater Elec., Inc. v. Thyssen-Bornemisza Inc., S.D.N.Y., 650 F. Supp. 444, 449.
12 Dableh v. Ontario Hydro (1996), 68 C.P.R. (3d) 129 at 144.
13 Canadian Shredded Wheat Co. v. Kellogg Co., [1938] 2 D.L.R. 145 (P.C.), Lord Russell at p. 150; William Edge & Sons Ltd. v. William Niccols & Sons Ltd. (1911), 28 R.P.C. 582 (House of Lords), Lord Robson at p. 596.
14 931 F. Supp. 602 (N.D.III. 1996), Shadur J. at p. 611.
15 Fox, Canadian Law of Trade Marks, 3rd Ed., 1972, p. 560.
16 Separation North American Corp. v. Noranda Mines, Ltd. (1947), 12 C.P.R. 102; [1947] Ex. C.R. 306.
18 Thomas & Betts v. Panduit, 935 F. Supp. 1399 at 1407 (N.D. lll 1996).
21 Sears, Roebuck & Co. v. Stiffel Col., 376 U.S. 225, 230 (1964).
22 Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896).
23 Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 256 (1945).
24 United States v. Dubilier Condenser Corp., 289 U.S. (1933) 178, at 186-187.
26 In Remington Rand Corp. v. Philips Electronics N.V.* (1995), 64 C.P.R. (3d) 467 at 476-7, the Federal Court of Appeal held that the registration of a primarily functional mark is a restraint on manufacturing and trade, since it effectively amounts to a patent or industrial design in the guise of a trade mark.
27 (1918), 36 R.P.C. 6 at 12-13.
28 Asbjorn Horgard v. Gibbs Nortac (1987), 14 C.P.R. (3d) 314 (F.C.A.).
29 Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) at 186.
30 (1987), 16 C.P.R. 517 at 523.
31 Christopher Wadlow;, The Law of Passing-Off, Second Edition (London: Sweet & Maxwell 1995) at para. 606.