E. Mishan & Sons. v. Supertek Canada Inc., 2016 FC 613

The Federal Court has granted a summary judgment motion and declared an industrial design invalid.

This action is the second part to a bifurcated proceeding. The Federal Court had previously found the plaintiffs' asserted patent to be invalid and dismissed the infringement action (2014 FC 326 and summarized the week of April 14, 2016; affirmed 2015 FCA 163 and summarized the week of July 27, 2015).

The industrial design at suit relates to an expandable garden hose comprising an inner flexible stretchable hose encased by an outer fabric hose affixed at both ends with customary garden hose fittings.

Before the hearing the plaintiffs had dedicated the industrial design to the public, discontinued the assertion of the design infringement portion of this action, and provided a letter containing a covenant not to sue to the defendants.

It was argued that the issue of validity was now moot after the dedication, but the Court questioned the effect of the dedication and noted that the dedication was made after the counterclaim as to invalidity was filed. The Court still proceeded to assess its validity, and found that the design is not original and is dictated solely by function.

Also, it was questioned whether the defendants are "persons aggrieved" considering the dedication and discontinuance of the industrial design claim. It was found that these actions, all unilaterally made by the plaintiffs, could not serve to eliminate the defendants' status as persons aggrieved.

The Court further ordered a summary trial with respect to Supertek's claim under section 7(a) of the Trade-marks Act. The claim pursuant to section 7(a) of the Trade-marks Act was found to require live witnesses, where their credibility will play a part in a proper determination of the matter. The Court stated that it would like to hear from the relevant witnesses by subpoena, if necessary, to give evidence in person in Court.