Thomas & Betts, Ltd. v. Panduit Corp.
T-1415-96
Richard J.
23/4/97
22 pp.
Whether shape of invention for which patent expired can be subject to trade-mark rights-Summary judgment-Main action alleging infringement of trade-mark consisting of distinctive oval shape for head of cable tie and of words "Barb tie"-Patent for cable tie expired-Present motion, pursuant to R. 432.3, seeking order for summary judgment dismissing action on basis no genuine issue for trial (ovalshaped cable tie preferred embodiment of now expired patent and therefore not subject to trade-mark rights; no use of alleged trade-mark "Barb tie" in Canada)-Motion granted; action dismissed-On expiration of patent, public at liberty to utilize invention to full extent and in precisely same way as patentee entitled to utilize it while patent remained-Patentee cannot assert trade-mark rights to very way expired patent directs public to make invention-Good policy reasons not to extend monopoly of patent in that manner-To require manufacturer to experiment with different configuration or to establish that configuration primarily functional would be to narrow use which can be made of invention disclosed in expired patent-Oval configuration of head described by inventor in patent application as preferred embodiment-Patentee has said successful use of invention has oval head-Plaintiff now asserting oval shaped head distinguishing guise which cannot be copied-Patentee cannot rely on any distinctiveness its dress-up may have acquired during period of monopoly to deny public full use of invention disclosed in its expired patent-Patentee can rely on other ways to distinguish source of its goods-Furthermore, no evidence produced by plaintiff establishing use of trade-mark in Canada-Federal Court Rules, C.R.C., c. 663, R. 432.3 (as enacted by SOR/94-41, s. 3).