Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd.

not thereby occupy, so as to obstruct, a field of legislation, like that of the criminal law, which has been committed exclusively to the Dominion.

re

J.--This is an appeal from the judgment of the President the Exchequer Court (1) in favour of the defendant in an -action for damages for the infringement of an Industrial Design which the plaintiff had, on November 26, 1926, registered under the provisions of the Trade- Mark and Design Act (R.S.C. 1906, c. 71).

The ground upon which the learned President based his judgment was that the plaintiff's design was not novel and was not proper subject-matter for registration.

The design in question relates to a rack or stand for the display of garments in a retail store. In its structure this rack is extremely simple. It consists of a straight 'horizontal bar so supported at its extremities that garments can be hung on it on ordinary coat or garment hangers. Each of the side supports consists of a vertical bar the lower end of which is fitted into a base or footing which rests upon the floor, and these footings are connected by another horizontal bar which holds the rack firm. The footing at each side where it connects with the bar is ornamented so that, in conjunction with an ornamented boss which encircles the upright at the lower end and rests on the footing, the effect produced is pleasing to the eye. The june- " tion of each upright with the top horizontal bar is also ornamented. It is upon the shape of the base or footing J. and the character of the ornamentation that the appellant relies to justify the conclusion that the combination is artistic, new and original.

No definition of a " design " is given in the Act. The word must, therefore, be taken in its ordinary signification which Lindley, L.J., in In re Clarke's Design (1), stated means: " Something marked out-a plan or representation of something."

A " design " is, therefore, a pattern or representation which the eye can see and which can be applied to a manufactured article. To be entitled to registration the " design " must be original. The Act does not expressly call for novelty, but s. 27 (3) provides that the

Minister's certificate of registration shall, in the absence of proof to the contrary, be sufficient evidence of the originality of the design. Just what is contemplated by

" originality " the Act does not make clear.. Under the

English Act a design, to be registrable, must be " new or original."

As that Act uses both words it has, in a number of cases, been sought to draw a distinction in meaning between them, and it has been held that " every design which is original is new, but every design which is new is not necessarily original."

In re Rollason's Design (2).

In Dover, Limited v. Niirnberger Celluloidwaren Fabrik

Gebriider Wolff (3), Buckley, L.J., defines " original " as applied to designs, as follows:- And further on he says:- The above quotations, in my opinion, set out what is called for by our Act. Does the appellant's design comply therewith?

In so far as the rack feature of the appellant's design is concerned (that is the horizontal bar upon which the garments are to be hung supported by upright side bars and connected at the bottom by another bar) the appellant admits that, before his registration, it was well known in the art, and no claim is made in respect thereof. The base or footing upon which stress is laid is briefly described as being composed of oppositely-disposed curved arms of which the outer ends and the upper side of the inner ends terminate in a spiral scroll.

This configuration is commonly known as the double ogee curve. The top of the base between the scrolls is flat and supports the upright which at the bottom is, as I have already pointed out, encircled by an ornamented boss. On the outer side of the base there is a heart-shaped panel carrying ornamentation. Each upright is crowned with a fluted, conical-shaped cap, while on its outer side, opposite to the point where it forms a junction with the top horizontal bar, there is an ornamented panel. Such being the appellant's design, we have to determine if it could properly be said to possess originality. The registration thereof was for the rack as a whole and not simply for its configuration and ornamentation.

In the judgment appealed from, the learned President held that it had been anticipated by a rack (Exhibit B) which the respondent, in the latter part of 1925 or the earlier part of 1926, had obtained in the United States where it was manufactured. This rack had the same general characteristics as the one for which the appellant obtained registration.

It had the same general outline, and the same underslung feature of the base. It had oppositely-disposed curved arms which, it was argued, constituted the double ogee curve. This rack the learned President held to be essentially the same as the appellant's registered design. It was, however, without ornamentation. To my eye there is a difference between theogee curve of the arms of the appellant's base and the arms of the base of the rack obtained in the United States by the respondent. In the latter, instead of having the curve commencing at the inner end of the arm and ending at the extreme outer end, I find the arm extending half its length at the inner end in a perfectly straight line, then making an abrupt curve and ending in a flat kndb which does not have the same artistic appearance as the double ogee curve.

It must be remembered, however, that to constitute an original design there must be some substantial difference between the new design and what had theretofore existed. A slight change of outline or configuration, or an unsubstantial variation is not sufficient to enable the author to obtain registration. If it were, the benefits which the Act was intended to secure would be to a great extent lost and industry would be hampered, if not indeed paralyzed. Whether these differences between Exhibit B and the appellant's registered design are so unsubstantial as to prevent the appellant's design being proper su'bjectmatter for registration I find it unnecessary to determine, for even if we were to hold that the appellant's registered design was not anticipated by Exhibit B, it was, in my opinion, anticipated by Exhibit F, which shews a cut of a bedside table which had been on the market. for years prior to the appellant's registration, and which was composed of two underslung base footings the arms of which presented the same double ogee curve as the appellant's design. These footings were joined together by a bar and from the centre of one of them there extended a vertical upright bar which supported a horizontal bar to the upper side of which was fastened a small table. If anyone had taken the uprights joined together by the top horizontal bar of Exhibit B and had set them in the base footings of

Exhibit F, he would have had precisey the design registered by appellant, less the ornamentation. The question then is: Could the appellant company take the framework of Exhibit B and set it on the base footings of Exhibit

F, place ornamentation thereon, and properly call it an original design?

I agree, provided that from the combination there is produced an original design which is substantially different from any of the old designs, or any known combination thereof.

was further contended that, even if the arms of the footings in Exhibit F possessed the same double ogee curve as the appellant's rack, it had been applied only to bedside tables and not to garment racks, and that, even if it had been registered for bedside tables, the appellant was entitled to have it registered for a different class of article, and, as authority therefor, the case of Walker, Hunter & Co. v. Falkirk Iron Co. (1), was cited. In that case it was held that a design for a kitchen range fire door with moulding on the top which, by being attached to the door, shut out all cold air and assisted the draft, and fulfilled a function in no way analogous to anything found in its former use, was a properly registered design, although similar mouldings had been used on sideboards. Whether or not a design is original is a question of fact and, unless the matter dealt with in one case is identical with that dealt with in another, a decision on the facts in the one case is of little assistance in the other. In In re Clarke's Design (2), Lindley, L.J., said:and in In re Read & Greswell's Design (3), Chitty J. said:- In my opinion, the function of a bedside table is analogous to that of a garment rack. The purpose of each is to have the top bar support a weight. Whether that weight is placed directly upon the upper side of the bar by the weight itself or is placed there by means of a hook to which the weight is attached cannot, in my opinion, be material.

Apart, therefore, from the ornamentation, the appellant's design was not original at the time of its registration. There was in it no new idea, nor any new way of