E. Mishan & Sons. v. Supertek Canada Inc.

E. Mishan & Sons. v. Supertek Canada Inc.

The Court found on the record, based primarily on uncontradicted expert evidence, that Industrial Design Registration No.146,676 lacks originality and is dictated solely by utilitarian function and therefore is invalid; the plaintiffs' unilateral dedication, discontinuance and covenant did not strip defendants of standing or render the validity issue moot, so summary judgment was granted declaring the registration invalid and ordering it expunged; however, credibility issues and unresolved factual disputes concerning alleged false or misleading communications to Canadian Tire and Wal-Mart in 2013-2014 meant there remained genuine issues on the s.7(a) counterclaim, so a summary trial was...

Citation
2016 FC 613
Parties
Plaintiff (defendant by Counterclaim): E. Mishan & Sons, Inc.; Plaintiff (defendant by Counterclaim): Blue Gentian, LLC; Defendant (plaintiff by Counterclaim): Supertek Canada Inc.; Defendant (plaintiff by Counterclaim): International Edge, Inc.; Defendant (plaintiff by Counterclaim): Telebrands Corp.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
3 June 2016
Procedural Posture
Civil Litigation: Patent, Industrial Design, Trademarks and Competition Claims (infringement and Validity) / Motions for Summary Judgment; Court Grants Summary Judgment on Industrial Design Validity and Orders Summary Trial on Remaining S.7(a) Trademarks Act Claim
Outcome
Court declared Canadian Industrial Design Registration No.146,676 invalid and ordered it expunged; court ordered a summary trial on Supertek Canada's s.7(a) Trademarks Act claim limited to alleged conduct affecting Canadian Tire and Wal-Mart for 2013-2014; costs reserved.
Legal Topics
Validity of Design Registration, Originality, Functionality Exclusion, Expungement of Register, Section 7(a) Trademarks Act (false or Misleading Statements), Summary Judgment, Summary Trial, Dedication to the Public
Source Language
English
Industrial Design Law Patent Law Trademark Law Competition Law Civil Procedure Validity of Design Registration Originality Functionality Exclusion +5 more

Case Brief

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Parties

E. Mishan & Sons, Inc.

Plaintiff (defendant by Counterclaim)

Blue Gentian, LLC

Plaintiff (defendant by Counterclaim)

Supertek Canada Inc.

Defendant (plaintiff by Counterclaim)

International Edge, Inc.

Defendant (plaintiff by Counterclaim)

Telebrands Corp.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Civil Litigation: Patent, Industrial Design, Trademarks and Competition Claims (infringement and Validity) / Motions for Summary Judgment; Court Grants Summary Judgment on Industrial Design Validity and Orders Summary Trial on Remaining S.7(a) Trademarks Act Claim

Legal Issues

  1. 1 Whether Industrial Design Registration No. 146,676 is original and registrable or is dictated solely by utilitarian function
  2. 2 Whether defendants are "persons aggrieved" under s.22(1) of the Industrial Design Act and have standing to seek expungement
  3. 3 Whether plaintiffs' post-filing dedication, discontinuance and covenant not to sue render the validity challenge moot

Ratio Decidendi

The Court found on the record, based primarily on uncontradicted expert evidence, that Industrial Design Registration No.146,676 lacks originality and is dictated solely by utilitarian function and therefore is invalid; the plaintiffs' unilateral dedication, discontinuance and covenant did not strip defendants of standing or render the validity issue moot, so summary judgment was granted declaring the registration invalid and ordering it expunged; however, credibility issues and unresolved factual disputes concerning alleged false or misleading communications to Canadian Tire and Wal-Mart in 2013-2014 meant there remained genuine issues on the s.7(a) counterclaim, so a summary trial was...

Court Disposition

Court declared Canadian Industrial Design Registration No.146,676 invalid and ordered it expunged; court ordered a summary trial on Supertek Canada's s.7(a) Trademarks Act claim limited to alleged conduct affecting Canadian Tire and Wal-Mart for 2013-2014; costs reserved.

Orders

  • Declare Canadian Industrial Design Registration No.146,676 invalid and expunge it from the Register upon filing of this Judgment with the Industrial Design Office
  • Order a summary trial in respect of Supertek Canada Inc.'s claim under s.7(a) of the Trademarks Act limited to Canadian Tire and Wal-Mart Canada for the years 2013-2014; parties to submit a proposed schedule within 10 days