WCC Containers Sales Ltd. v. Haul-All Equipment Ltd., (2003) 238 F.T.R. 45 (FC)

• Judge: Kelen, J.
• Court: Federal Court (Canada)
• Case Date: June 24, 2003
• Jurisdiction: Canada (Federal)
• Citations: (2003), 238 F.T.R. 45 (FC);2003 FC 962

WCC Containers Sales v. Haul-All (2003), 238 F.T.R. 45 (FC)

MLB headnote and full text

Temp. Cite: [2003] F.T.R. TBEd. SE.018

WCC Containers Sales Limited and WCC Refurb Limited (applicants) v. Haul-All Equipment Ltd. (respondent)

(T-1385-97; 2003 FC 962)

Indexed As: WCC Containers Sales Ltd. v. Haul-All Equipment Ltd.

Federal Court

Kelen, J.

August 26, 2003.

Summary:

The applicant brought an application to expunge the respondent's trademark.

The Federal Court allowed the application.

Trademarks, Names and Designs - Topic 264.1

Trademarks - What trademarks registrable - Prohibition - Functional trademarks - The applicant brought an application to expunge the respondent's distinguishing guise trademark on an animal-proof garbage can, the HID-A-BAG - The applicant argued that each feature of the respondent's trademark was functional - The respondent's brochure underlined the HID-A-BAG's sturdy construction designed to stop animal access, the self-closing and wind-proof loading doors and the convenience in the removal of bagged garbage - The Federal Court held that the respondent's trademark was primarily functional - While a distinguishing guise could possess a functional element, it could not go beyond distinguishing the wares of its owner to the functional structure - Therefore, the trademark was invalid and was subject to expungement - See paragraphs 39 to 52.

Trademarks, Names and Designs - Topic 264.6

Trademarks - What trademarks registrable - Prohibition - Unreasonable limit on the development of an art or industry - The applicant brought an application to expunge the respondent's distinguishing guise trademark on an animal-proof garbage can, the HID-A-BAG - The respondent's trademark incorporated specifications listed in requests for tenders made by Public Works and Government Canada and the National Capital Commission (NCC) - The applicant was unable to bid on those open competitions - The registered trademark allowed the respondent to threaten Public Works and the NCC with lawsuits for trademark infringement - The Federal Court held that the tenders made the specifications for a functional purpose and the respondent used its design trademark to limit the development of the art or industry - The trademark was expunged - See paragraphs 53 to 58.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - The applicant brought an application to expunge the respondent's distinguishing guise trademark on an animal-proof garbage can, the HID-A-BAG - The applicant argued that the trademark was not distinctive at the time of the trademark application (1995) or at the time the action was commenced (1997) - The Federal Court rejected the argument - There was ample evidence of use of the trademark prior to the application - HID-A-BAG units were sold across Canada and were featured in the respondent's advertising and promotional activities - The respondent was the only manufacturer and retailer of garbage cans of this shape in Canada - The HID-A-BAG became an identifier of the respondent company and increased its sales - See paragraphs 29 to 38.

Trademarks, Names and Designs - Topic 889.4

Trademarks - Registration - Expungement of mark - Grounds - Prohibited trademark - [See Trademarks, Names and Designs - Topic 264.1 and Trademarks, Names and Designs - Topic 264.6 ].

Trademarks, Names and Designs - Topic 889.6

Trademarks - Registration - Expungement of mark - Grounds - False declarations - The applicant brought an application to expunge the respondent's distinguishing guise trademark on an animal-proof garbage can, the HID-A-BAG - In its trademark application, the defendant claimed that it had used the distinguishing guise design in Canada since November 1983 - The applicant argued that this statement was a false declaration as the defendant was not incorporated until January 1985 - The applicant also argued that neither fraud nor intent was necessary to invalidate a trademark that contained a false statement - The Federal Court held that the error made by the defendant was not a fraudulent misrepresentation - Further, the error was not fundamental to the registration of the trademark, because the discrepancy would not have prevented the registration of the trademark - See paragraphs 16 to 28.

Trademarks, Names and Designs - Topic 8061

Designs - Registration - General (incl. effect of) - The applicant brought an application to expunge the respondent's distinguishing guise trademark on an animal-proof garbage can, the HID-A-BAG - The applicant argued that the respondent was barred from obtaining a distinguishing guise trademark because the design had previously been the subject of an industrial design registration under the Industrial Design Act - The Federal Court held that registration under the Industrial Design Act did not preclude registration under the Trade-marks Act - If Parliament had intended that result, it would have explicitly done so as it did with the overlapping of industrial design protection and copyright protection - Further, although the scope of trademark protection was narrow, if a design could fit within the constraints of the Trade-marks Act, it was entitled to registration - See paragraphs 59 to 64.

Cases Noticed:

Mr. P's Mastertune Ignition Services Ltd. v. Tune Masters (1984), 82 C.P.R.(2d) 128 (F.C.T.D.), refd to. [para. 15].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161; 61 C.P.R.(3d) 12 (T.D.), refd to. [para. 15].

General Motors du Canada et al. v. Décarie Motors Inc. et al., [2001] 1 F.C. 665; 264 N.R. 69; 9 C.P.R.(4th) 368 (F.C.A.), refd to. [para. 15].

Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats Inc., [2001] 2 F.C. 536; 205 F.T.R. 176 (T.D.), affd. (2002), 297 N.R. 135; 18 C.P.R.(4th) 414 (F.C.A.), refd to. [para. 15].

Rainsoft Water Conditioning Co. v. Rainsoft (Regina) Ltd. (1987), 11 F.T.R. 109; 14 C.P.R.(3d) 267 (T.D.), refd to. [para. 17].

Melnor Manufacturing Ltd. v. Lido Industrial Products Ltd. (1969), 56 C.P.R. 212 (Ex. Ct.), refd to. [para. 18].

Marchands Ro-Na Inc. v. Tefal S.A. (1981), 55 C.P.R.(2d) 27 (F.C.T.D.), refd to. [para. 18].

Bonus Foods Ltd. v. Essex Packers Ltd. (1964), 43 C.P.R. 165 (Ex. Ct.), refd to. [para. 19].

Hughes (W.J.) & Sons "Corn Flower" Ltd. v. Morawiec (1970), 62 C.P.R. 21 (Ex. Ct.), refd to. [para. 19].

Biba Boutique Ltd. v. Dalmys (Canada) Ltd. (1976), 25 C.P.R.(2d) 278 (F.C.T.D.), refd to. [para. 20].

National Car Rental System, Inc. v. Megill-Stephenson Co. (1996), 70 C.P.R.(3d) 295 (F.C.T.D.), refd to. [para. 21].

Standard Brands Ltd. v. Staley (1947), 6 C.P.R. 27 (Ex. Ct.), refd to. [para. 26].

Boston Pizza International Inc. v. Boston Chicken Inc. (2003), 301 N.R. 190 (F.C.A.), refd to. [para. 33].

White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 47 F.T.R. 172; 39 C.P.R.(3d) 94 (T.D.), refd to. [para. 36].

Remington Rand Corp. et al. v. Philips Electronics N.V. (1995), 191 N.R. 204; 64 C.P.R.(3d) 467 (F.C.A.), refd to. [para. 39].

Levesque et al. v. Comeau et al. (1970), 16 D.L.R.(3d) 425 (S.C.C.), refd to. [para. 42].

Milliken & Co. et al. v. Interface Flooring Systems (Canada) Inc. (2000), 251 N.R. 356; 5 C.P.R.(4th) 209 (F.C.A.), refd to. [para. 45].

United States Playing Card Company's Application, In re, [1908] 1 Ch. 197, refd to. [para. 62].

Sobrefina S.A.'s Trademark Application, [1974] R.P.C. 672 (Ch. D.), refd to. [para. 62].

Authors and Works Noticed:

Fox, H., Canadian Law of Trade Marks and Unfair Competition (3rd Ed. 1972), pp. 252, 253 [para. 19].

Zimmerman, G.J., Extending the Monopoly? The Risks and Benefits of Multiple Forms of Intellectual Property Protection, (2001), 17 C.I.P.R. 345, pp. 347, 364 to 367 [para. 60].

Counsel:

Scott Miller, for the applicants;

Bruce Morgan, for the respondent.

Solicitors of Record:

Marusky Miller & Swain LLP, Ottawa, Ontario, for the applicants;

Gowling Lafleur Henderson LLP, Ottawa, Ontario, for the respondent.

This application was heard on June 24, 2003, at Ottawa, Ontario, by Kelen, J., of the Federal Court, who delivered the following decision on August 26, 2003.