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THE ®T INDUSTRIAL AND INTELLECTUAL : - 1923-1947 HAROLD G. FOX St. Cathârines, Ont . The setting down of a chronological conspectus of the law of , trade marks, industrial designs and copyright over the past twenty-five years involves primarily a review of the develop ment of the pertinent statutory law. The pertaining to all four branches of the law of industrial and are concerned with matters within the legislative competence of the Dominion Parliament and, while it is of importance to consider the established by the various of record throughout the Dominion, it is within the sphere of statutory amendment that the development of the law, in this field has shown growth and change, as contrasted with the interpretative function, which is solely the province of the courts. The legislative history of this branch of the law has not been an entirely happy one, or one which can evoke any general admiration. It discloses, on the contrary, a composite of tardy attention to pressing problems opposed, at timés, to a needless urgency to legislate in response. to vocal minority appeal, coupled with paradoxical to appear original while reluctantly copying the finished products of other systems of jurisprudence. This Janus-faced method of is, perhaps, best illustrated in the case of the , although the Act also displays stigmata of -the same tendency . Both Great Britain and the United States have statutory systems in these fields of law which for long have been, in general, the admiration and envy of Canadian . ®n occasion the Canadian Parliament makes an- a decade late, as in the case of the Copyright Act, to take advantage of the experience of the Mother, of Parlia- ments, without giving the appearance of doing so. Sometimes, too, our legislative conscience receives inspiration from the effective actions of our .neighbours to the south. Whatever may be the source of these stimuli, it will always be to our advantage if we welcome them for consideration and, after due and critical analysis, adapt and adopt the best of them for our own use. It is not a mark of national juvenility to copy openly and unashamedly from other systems of jurisprudence but rather an indication of stature and maturityto admit that older may have something useful from which to borrow and that older systems of law may have been perfected by experience .

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Patents of In 1922 the Patent Act was that of R.S.C., 1906, c. 69. On CertainSeptember 1st, 1923, a new was enacted., minor changes were made in the basis,of grant whereby public use or sale of the invention in for more than two years prior to application would invalidate a patent issuing on such application whether the prior use or sale were with the of the applicant or not. For the first time a limitation was placed on the claims to be allowed in case of patents relating to substances prepared or produced by chemical processes and intended for food or medicine. 2 Applications for re-issue were limited to a period four years from the date of the first grant.' But the main change had to do with the working provisions. Under the Act of 1906,4 a patent was to cease and determine on the continuance of importation of its subject matter into Canada more than one year after its date, or if the patentee did not, within two years from its date, commence and thereafter con- tinuously carry on in Canada the manufacture of the patented subject matter. The maintenance of this provision precluded Canada's adherence to the International Union for the Protection of Industrial Property as being contrary to Article V of that Convention. In 1923 new provisions were inserted, , which removed the absolute prohibition as to importation and radically softened the provisions as to manufacture. By this amendment Canada was enabled to participate in the advantages of the Convention, thus giving to her inventors the one year priority period during which their corresponding applications might be validly filed in the other countries of the Union. The Act of 1923 set up a system of working conditions according to which a member of the public was permitted to apply to the Commissioner of Patents for the revocation of a patent on the ground that the reasonable requirements of the public were not being satisfied and that adequate manufacture of the patented article, or the patented process, was not being carried on within Canada. A system was set up whereby any person interested might obtain from the Commissioner the grant of a compulsory licence for the use of the invention on reasonable terms. Those sections' of the Act of 1923 followed closely in their phraseology the sections introduced

1 13-14 Geo. V, e. 23. 2 S. 17. 3 S. 27. ' S.38. 4 S. 40. s Ss. 40, 41 .

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into the British Act of 1907,7 despite the fact that in 1919, some four years previously, the Imperial legislation upon which they were based was repealed,$ and amended sections, dealing generally with the same subject, but quite different in scope,'were passed. The Act of 1923 was carried into the Revision of 1927 as Chapter 150. Further amendments of a somewhat minor nature were made to the working provisions of the statute in 1928,9 to' the provisions relating to convention applications in 1930,10 and to those relating to conflicting applications, impeachment actions and declarations as to infringement in 1932. 11 A further important change was made in the law by this latter statute as a result of the decision of the Privy Council in Rice v. Christiani & 1Veilson.12 Before that time the phrase "not known or used by others before his invention thereof" contained in the Patent Act 13 had been held to refer to knowledge of a public or open charàcter. 14 The Privy Council pointed out that upon the clear language of the section such a finding was impossible. Parliament, therefore, in the following year, hastened, by a process of legitimatio per subsequens ~natrimonium, to enact section 37A of the Patent Act, 15, which provided that such prior knowledge should only invalidate a subsequent patent if that knowledge had "become available to the public" or had formed the basis of an application for patent. In 1935 the Patent: Act _was given a full-dress revision..' A number of changes and amendments were made but it will suffice to mention only, two of them. In the preceding statutes the basis of grant had been set out generally in terms which provided that "any person who has invented any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement thereof, . . . " might, upon taking certain steps, obtain a patent for his invention. 17 But by the statute of 1935 18 this phraseology was quite changed and it was provided that a patent should issue, subject to certain qualifica- tions and procedure, to "any of an invention". Upon turning to the interpretation section 11 it is found that "invention" 7 7 Edw. VII, c. 29. 11 9-10 Goo. V, c. 8. 1 18 Goo. V, .c. 4. l0 20-21 Goo. V, c. 34. 1122 Goo. V, c-21 . is [19311 A.C., 770. , 13S. 7. 14 The Queen v. La Force (1894), 4 Ex. C.R. 14; ~Gerrard Wire-Tying Machine Co. Ltd. of Canada v. Cary Mfg. Co., [19261 Ex. C.R. 170 . 16 Now s. 61. - 1B 25-26 Goo. V, c. 32. 17-See e.g. s. 7, 13-14 Geo. V, c._ 23. 18S.26 (1). 19 S. 2 (d).

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means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". Verily, Parturiunt montes. In the new statute of 1935 the working provisions were radically amended. Sections 64-71 of the act now deal with the question of abuse of exclusive rights under patents in a remarkably comprehensive manner, providing against the following abuses: (a) failure to make or to work the patented invention; (b) importa- tion to the detriment of home manufacture; (c) failure to meet the demand to an adequate extent and on reasonable terms ; (d) preju- dicing, contrary to public interest, the country's trade or industry, or that of particular concerns by refusing a reasonable licence to others; (e) attaching unfair conditions to the acquisition, use, or working of the patented article or process; (f) using a patent for a process to prejudice the manufacture, use, or sale of materials used in that process. These provisions are so widely drawn that it is difficult to conceive of any abuse that is not caught within Thetheir net.20 Commissioner has power at any time after the issue of a patent to require the patentee to provide as to whether a patented invention is being worked within Canada on a commercial scale and, if not, why it is not being done. Upon application, by any interested party, the Commissioner has power to order the grant of a compulsory licence upon such royalty as he shall decide is fair and reasonable, one of the principles being that he shall endeavour to secure the widest possible use of the invention in Canada consistent with the patentee deriving a reasonable advantage from his patent rights." In a proper case the Commissioner has power to order the revocation of a patent.22 These provisions guarding against abuse of patents are, if anything, too harsh on a patentee who has contributed a new and useful invention to the store of public amenities. But they are in harmony with the socialistic trend of making easy the way of the common man and besetting "with pitfall and with gin" the path of the man of energy, endeavour and initiative, such as the inventor or the successful industrialist, and, regarded in that light, they thoroughly fulfil their object. They were modelled on the

2o Although the Swan Committee, appointed to consider the British Patents and Designs Acts, in its Second Interim Report, dated April 1946, made recommendations for amendments guarding against further types of abuse, notably in an effort to protect and encourage export trade. 21 S. 67. 22 S. 66(d).

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Imperial legislation of 1919 23 and it should occasion little surprise that the Canadian Parliament delayed for twelve years, labouring under an antiquated system of working provisions attached to patents which had been proved inadequate when the 1923 Cana_ than Act was under consideration, before enacting them in 1935. It would seem reasonable to suggest that, if the framers of Cana- dian legislation desire to make use of the experience of the Imperial parliamentary draftsmen and of the body of jurisprudence surrounding their efforts, and are - prepared to pay the tribute to . Imperial legislation that their action of copying implies, it might be as well to take the natural and proper course of copying the'most up-to-date legislation. Upon the outbreak of war, control of the whole system of industrial property became necessary. Powers of a wide nature with respect to patents -were accorded, the Government by the Defence of Canada , 24 and dealing's with regard to patents, designs, copyright and trade marks were regulated by the Patents, Designs, Copyright and Trade Mark (Emergency) Order, 1939. 25 All patents, designs, trade marks and copyright, the property of enemies, enemy subjects or those in enemy terri- tory, were vested in the Custodian by the Regulations Respecting Trading with the Enemy. 26 In a total war, such as that through which we have recently passed, governments find it necessary to vest wide emergency powers in the branch and to relegate to a relatively unimportant position any rights of compensation that the ordinary citizen . may have against the Government. Although section 19 of the Patent Act provided that the Government should have the right to use any patented invention, paying to the patentee such compensation as the Commissioner of Patents reported to be reasonable, the Government felt that it should have a wider ability to order munitions and supplies from independent con- tractors without those contractors incurring the risk of action for infringement of patents. At the same time the Government desired to ensure to itself and its allies a supply of munitions and_ material at prices computed apart from any patent or other royalties which might enter normally into the computation of their cost. For these reasons Orders in Council were passed ,27 21 9-10 Geo. V, c. 8. - 24 P.C. 2483, September 3rd, 1939, s. 19. 25 P.C. 3362, October 27th, 1939. 26 Revised in 1943 by P.C. 8526 of November .13th, 1943 ; The Trading with the Enemy Transitional Powers Act, 1947, 11 Geo. VI, c. 24. 27 P.C. 6982 of December 4th; 1940 ; P.C. 11081 of December 8th, 1942 ; P.C . 449 of January 24th, 1944 .

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under the authority of the War Measures Act, by virtue of which the Government undertook to indemnify any person against any claim for infringement of patent based upon the use of any invention in the production or sale of munitions or supplies, or in the carrying out of defence projects, or for the non-payment of royalties under any contractual obligation . Such actions were barred by Order but the Crown obligated itself to pay such sums as the Commissioner reports to be reasonable. This principle was made applicable in the case of both direct contractors with the Government and their sub-contractors. There is no record to indicate how many individual cases o£ infringement or non- payment of royalties were affected by these Orders or how many cases were settled between the patentee and the Government without recourse to the procedure provided by way of having compensation fixed by the Commissioner. At an early stage in the war the Exchequer and the had both held that a patentee was entitled ex debito justitiae to compensation for use of his patent by the Crown,$ and this no doubt had some effect on the wording of the Orders in Council just mentioned.'9 It is improbable that many applications will be made to the Commissioner for the fixing of compensation, there being so far only two reported cases." It is interesting to note that, in the second of these cases, an appeal to the Exchequer Court resulted in quadrupling the amount of compensation awarded the patentee by the Commissioner . On May 14th, 1947, there was enacted the Patent Act Amendment Act, 1947.31 It made a considerable number of minor amendments and imported some new principles into the law. By section 19A a system of Government Owned Patents was instituted, whereby government servants acting within the scope of their duties and employment are obliged, upon being required to do so by the Minister of National Defence, to assign to the Minister on behalf of the Crown any invention they may make in the instruments or munitions of war. Any other person is permitted to do the same and, failing agreement, compensation to be paid, to other than a government employee is to be settled by the Commissioner with an appeal to the Exchequer Court. There are comprehensive provisions as to the preservation of

28 The King v. Bradley, [1941] Ex. C.R. 1 ; [1941] S.C.R. 270 ; 1 Fox Pat . C. 131 . 29 The judgment of the Exchequer Court was issued on August 27th, 1940 . 30 The Secretary of State of Canada (The Custodian) v. The King and Aluminum Co. of Canada Ltd. (1945), 5 Fox Pat . C. 17 ; Irving Air Chute Co. v. The King (1943-4), 4 Fox Pat. C. 1, 27; (1946-47), 6 Fox Pat. C. 103 . 3111 Geo. V1, c. 23.

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secrecy with regard to such , .the Official Secrets Act,' of unpleasant odour and memory, being imported for the purpose. Applications are to be kept secret if the Minister of Nàtional Defence so certifies, both as regards Canada and foreign countries in respect of which the has entered into an agreement respecting such inventions. Section 61 of the Patent Act 32 provided that in order to defeat a subsequent patent there had to be prior knowledge or use by some other inventor of such a type that the invention had become available to the public or bad formed the basis of -a . The use of the word "inventor" was an obvious absurdity which found its way into the statute due to the precipi- tate haste with which Parliament amended it in the year following the Privy Council decision in Rice v. Christiani & Neilson.33 Nevertheless it remained in the statute, for a period of fifteen years, through the complete redrafting of the act, until, in 1947, the obvious change from the word "inventor" to the word "person" was made.34 By section 19 of the amending act the fees provided by section 73 of the main act were substantially increased. The reason for so doing appears on the notes of the bill as presented to the. House of Commons in the following words : "The purpose of this amendment is to secure revenue from which to defray expense involved in the printing of specifications and drawings of patents, as provided for in section 25 of the principal Act". Of course, no additional revenue was needed to defray the cost of printing. The Patent Office has, for many years, turned into the Treasury a surplus running into six figures ayear, and has received probably the most niggardly and penny-pinching treatment of any Government department, thus forcing its very efficient staff to function in an unpardonably inefficient manner. But we are nowpromised printed copies of patents, to the great benefit of the industrial life of the country and a slight lifting of our sense of shame and inadequacy in the international sphere. At any rate, the increased fees .are now being collected. on all applications and proceedings in the Patent Office. It may well be that we shall see printed patents at some time. The amending act 35 . provides that applications dealing with atomic energy shall be communicated to the Atomic Energy 38 First passed as s. 37A of the amending act of 1932. 33 [19311 A.C. 770. 34S. 17. 11 S. 19C.

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Control Board. The Atomic Energy Regulations of Canada3s empower the Commissioner of Patents to keep such applications secret, provide for the payment of compensation to the inventor and prohibit the filing of corresponding foreign applications . In the forensic field, the presence or absence of that "impal- pable something which distinguishes things invented from things otherwise produced" 37 has continued to plague the . The attempt to define the concept of invention is about as likely to be successful as the attempt to cage the concept of beauty; and the adventures of judges among inventions has been likened to the adventures of the soul among masterpieces. To state whether the subject of any patent involves invention or not is to make a value judgment, and it is obvious that few, if any, judges have the equipment to exercise such discretionary powers. Lord Camden said that "The discretion of a is the law of tyrants". In more modern times Judge Jerome Frank pointed to the fact that few judges can qualify as scientific experts" and thirty-six years ago Judge Learned Hand spoke pungently of "the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass on such questions as these ., . How long we shall continue to blunder along without the aid of unpartisan and authoritative scientific assistance in the administration of , no one knows ; but all fair persons not conventionalized by provincial legal habits of mind ought, I should think, unite to effect some such advance".39 At any rate, the has heard, during . the past twenty-five years, thirty-three appeals involving patents in which one of the questions for decision was invalidity of the patent sued upon because it did not display the mystical element of invention. Of these cases five went on further appeal to the Judicial Committee of the Privy Council. In all these cases 42 patents were involved : the plaintiff was successful in 9 cases and unsuccessful in 22; in 2 cases success was divided. Of the 42 patents involved 14 were held valid and 28 invalid. Of the five cases that went on appeal to the Privy Council the Supreme Court had held five patents invalid for lack of invention. The Privy Council reversed the Supreme Court in four of the five cases holding that the patent in suit did disclose invention, and in the fifth case upheld the Supreme Court but on a different ground. as P.C. 1098 of April 1st, 1947, ss. 500-503. 37 Crosley Radio v. Canadian General Electric Co. Ltd., [1935] Ex. C.R. 190, per Maclean J. Is Picard v. United Aircraft Corporation (1942), 53 U.S.P.Q. 563, at p. 570. 39 Parke-Davis v. H. K. 1t1nlford Co. (1911), 189 F. 95, at p. 115.

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The box score for the Supreme Court would therefore be : Valid 10, Invalid 32 : Final Score (including the Privy Council) Valid 14, Invalid 28. That is the situation as it involves the question only of invention or inventive ingenuity without taking into account all the patents that have been destroyed in the lower courts before they. reached the Supreme Court, or those that were struck down on other grounds. This is hardly an encouraging picture to present to the inventors and scientists of the country. Either the standards accepted by the Patent Office are deplorably low or the Supreme Court has adopted a pronounced doctrinal trend inimical to the validity of patents. That- the latter is probably the true explanation is given weight by the record- in the Privy Council. In 1945 Mr. F. A. McGregor, Commissioner, Combines Investigation Act,, issued a; Report on Canada and International Cartels. In Part III of this Report -Mr. McGregor had much to say about "The Relation of Patents to Cartels and Combines". On a previous occasion the present writer has stated that, "wiih all due deference to the members of the McGregor Commission and the authors of the Report, I respectfully dissent from most of its statements and all of its conclusions, but, as Terence long since so eloquently observed : Quot homines, tot sententiae: suus cuique mos"..40 The Report was admittedly a rehash, without re-examination, of discussions and findings in the United States 41 and has contributed much to the misunderstanding of patents. As a result, however, of its publication, Parliament, needled by the - missionary fervour of the anti-capitalists and anti-mono- polists, rushed into effect an amendment to the Combines Investi- gation Act which now finds its place as section 3® of -the act. It is a long section but, in general, it provides that if patents.or trade marks are used unduly to (a) limit facilities for dealing in articles of commerce, (b) restrain trade or commerce, -(c) limit production or unreasonably exhance the price, or (d) prevent or lessen competition, then the Exchequer Court of- Canada shall have power to (a) declare void agreements or licences, (b) restrain the carrying out of such agreements 'or licences, (c) direct the grant of licences under any patent to such persons and- on such terms as the court deems proper, or revoke such patent, (d.) direct the registration of any trade mark to be expunged, and (e) direct almost anything else the court feels like directing "to prevent any 4° Patents in Relation to Monopoly (1946), 12 Canadian Journal of Economics and Political Science 335. 41 Cf., Patents in Relation to Monopoly: ARejoinder (1947), 13 Canadian Journal of Economics and Political Science 69.

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such use." By a proviso, no order is to be made that is contrary to any treaty or convention to which Canada is a party. As pointed out by Maclean J. in Thernzionics Ltd. et al. v. Philco Products Ltd. et al. 42 Parliament had in, April 1937, repealed the then existing section 30 of the statute, which was in somewhat similar terms, although not nearly so drastic. The repeal, said Maclean J., was attributable to the fact that the Patent Act had provided a comprehensive set of sections supplying remedies for abuse of exclusive rights under patents and Parliament had therefore deliberately legislated so as to exclude from the Combines Investigation Act and the Criminal Code anything in the nature of a monopoly derived from the exclusive rights under a patent. Apparently consistency is not a jewel of Parliamentary thought. The time of the repeal, 1937, is significant. The new Patent Act had been passed in 1935 and a new Convention had been published by the International Convention for the Protection of Industrial Property sitting at London in 1934. Although Canada did not adhere to this revised Convention it is probable that the officials of the Government had had called to their attention the fact that Canada's adherence to the Convention at the time of the Patent Act of 1923 precluded any legislation on the subject which went further than that provided by sections 65-71 of the Patent Act. Section 30 of the Combines Investigation. Act does go farther than Canada is permitted to go in view of its adherence to the Convention and the enactment of the proviso at the end of the section only serves to make us look slightly ridiculous. At any rate, a considerable part of the section is as dealing neither with patents nor , but only with civil rights within the province. Its terms have not so far been invoked in any case. It was enacted as the result of crusading zeal. We have had of late much legislation of a minatory type, intended only to act in terrorem and not designed to be put into execution. This amendment to the Combines Investigation Act is probably of the same type." As noted previously, Canada has not adhered to the Revision of the International Convention made at London in 1934. This may possibly be due to a conflict that is thought to exist between section 56 of the Patent Act and Article V of the Convention or it may be due to mere inertia. Thirteen years have passed since the Revision of London and, although the relevant statute 42 (1941),1 Fox Pat . C. 166, at p. 207. 43 Cf., Parturiunt Montes : Nascetur Ridiculus Mus (1946), 24 Can . Bar Rev. 749.

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received quite a going over at the time of the committee hearings leading up to the enactment of the Patent Act Amendment Act, 1947, nothing was done about section 56, and, as appears from the record of proceedings, no discussion concerning it took place either. in committee or in either House.' The second suggested explana- tion would -therefore appear to have some force.

Trade Marks The statute governing trade marks at the opening of the period under review was the Trade Mark and Design Act which, first enacted as a Dominion statute in 1868,44 was carried into the revision of 1906 as chapter 71. An amendment of 1923 45 provided for applications under the International Convention and for trade marks of foreign associations . An amendment of 1927 46 provided for the registration of union labels, and in the same year the amended statute appeared in the Revised Statutes as chapter 201. Until the year 1928, actions for infringement of registered trade marks could be brought either in the Exchequer Court of Canada or in the superior courts of the provinces, but an action for passing off or unfair competition could be brought only in the provincial courts, the Exchequer Court having no at . By an amendment to the Exchequer Court Act made in that year 47 the court was given a limited jurisdiction at common law and in where an action primarily concerned patents, trade marks or designs. This jurisdictional trend was completed by the Unfair Competition Act, 1932, which conferred on the Exchequer Court full jurisdiction in matters relating to trade marks, passing off and unfair competition. - Prior to 1932, the Trade Mark Act dealt with trade marks as trade marks and with their registration, but no statute existed that had the serious object of restraining unfair competition. These broader issues were left to be determined according to the principles of common law and equity. .With the- growth of commerce came an increase in fraudulent types of competition and it appeared of vital importance to healthy business conditions that such competition should be suppressed . The Unfair Com- petition Act, 1932, which repealed those sections of the Trade Mark and Design Act relative to trademarks, was enacted as an attempt to regulate this type of competition. The title of the 44 31 Vic., c. 55. - - 45 13-14 Geo. V, c. 28 . 41 17 Geo. V, c. 71. 47 R .S .C ., 1927, c. 34, s. 22, as amended by 18 Geo. V, c. 23, s. 3(c) .

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act is a misnomer because it covers practices and acts that do not constitute competition and applies to many acts of competition and non-competition that are both fair and unfair. It is, however, based on an ethical foundation and was, in its origins, the work of a skilled and able practitioner in this branch of the law. Before enactment, however, it was forced to undergo so many deletions, amendments and incrustations that it now abounds in contra- dictions and imperfections, is difficult of interpretation and thoroughly unsatisfactory. The statute endeavoured to implement Article 10 bis of the International Convention "I by enacting that no person in the course of his business should (a) make any false statement tending to discredit the wares of a competitor ; (b) direct attention to his wares in such a manner as to cause confusion between his wares and those of a competitor; (c) adopt any other business practice contrary to honest industrial and commercial usage.49 This was a large order and one probably impossible of practical application in modern commercial usage. In the fifteen years since its enactment no attempt has been made to apply the section except in so far as it relates to the action for passing off, and the Exchequer Court of Canada, shortly after its passage, effectively limited it within that compass." In the Kitchen Overall case sL Maclean J. observed that the section "seems to express substantially the common law in such cases while at the same time implementing Canada's obligations, in part at least, under the Convention". It may be observed that it would seem proper that Parliament ought to implement completely, and not only in part, its obliga- tions under a treaty to which it has adhered. Nor does the section "express substantially the common law in such cases" but goes and was intended to go far beyond it. If the interpretation which Maclean J. placed on the section is the correct exposition of its effect, then its enactment constitutes nothing more than that type of pious parliamentary effusion which does much to bring democratic institutions into disrepute. If, on the other hand, the statute has some larger practical effect than indicated in the statements of Maclean J. those statements must be viewed as examples of that type of judicial discretion which amounts to loose thinking and arbitrariness and serves The Hague, November 6th, 1925. 11 S.11. so A.C. Spark Plug v. Canadian Spark Plug Service et al., [1935] Ex. C.R. at p. 69 per Maclean J.; Kitchen Overall &Shirt Co. Ltd. v. Elmira Shirt & Overall Co. Ltd., [1937] Ex. C.R. 230. 11 Supra, footnote 50.

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to rob of force the will of the people as expressed by its representa- tives in Parliament. One or other conclusion is inescapable, for, despite the fact that twelve years have elapsed since that inter- pretation was placed upon the section, no judicial pronouncement at variance with it has been made' and the, section remains on the statute book unrepealed and unamended. So far as concerns registration of trade marks the common law has always held that the first user of a trade mark has para- mount rights to the mark. This was also the theory imported into the Trade Mark and Design Act. But under the Unfair Competition Act, 1932, section 4(1) and (3) provides that,the person who first uses or makes a mark known in Canada shall be entitled to its exclusive use in Canada, provided he registers it within a certain time limit as set forth in the section. By section 4(2) use is made a subsidiary factor to registration. The effect of a series of decisions 52 has been to hold that a first user has no cause of action to expunge a similar mark for similar goods if it has been registered by another person. This is, of course, a principle quite opposed to the elementary concept of trade mark law, which has always made the rights of the first user paramount in every one of the common-law and quite ignores the fact that the section of the statute provides in clear terms, not that the first registrant shall have .'exclusive rights; but that the person who first uses shall have those rights provided he registers in accordance with the terms of the statute. The -Supreme Court has indicated, in a somewhat guarded obiter, some disagreement with the interpretation placed on the section by the Exchequer Court 53 but until the matter comes squarely for decision on appeal, we are bound by the, present decisions. If the inter- pretation of the Exchequer Court is upheld by the Supreme Court it is to be hoped that Parliament will act with appro- priate speed to eliminate such an iniquitous doctrine from our commercial life." 52 Canada Crayon Co. Ltd. v. Peacock Products Ltd., [1936] Ex. C.R . 178 ; Fine Foods of Canada Ltd. v. Metcalfe Foods Ltd., [1942] Ex . C.R. 22, 2 Fox Pat. C. 113, 202 ; [1943] S.C.R. 42 ; and Fisher v. Packers Ltd. (1945), 5 Fox. Pat . C. 50. 51 Cf., Fine Foods of Canada Ltd. v. Metcalfe Foods Ltd ., [1943] S.C.R . 42 ; 2 Fox Pat . C. 202, at p. 203 per Ke;win, J. 54 It may be noted that in Standard Brands v. Staley, [1946] Ex. C.R . 615, 5 Fox Pat . C. 176, O'Conner J. ignored the jurisprudence established in the three earlier cases and ordered a registered mark expunged at the suit of one who had established prior use but had not registered, although the expres- sed ratio decidendi was that the mark had not been used before registration. Since the above was written, the Exchequer Court of Canada has hand- ed.down judgment in Feingold et al. v. Demoiselle Juniors Ltd . (unreported) . In giving judgment, Cameron J. observed : "I can find no section of the Act which in clear terms gives any rights to one who was not the first to use or make known his mark in Canada" .

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The Unfair Competition Act, 1932, has been the subject of much complaint and many objections. It has remained on the statute books without amendment for fifteen years although many representations have been made requesting either its amendment or the passage of a new statute. Nothing has been done despite the fact that the British Trade Marks Act was given a thorough overhauling in 1938 and the additional circum- stance that the United States has enacted a comprehensive new statute, known as the Lanham Act, which came into effect in the middle of 1947. Our statute is not only a vehicle that has been unsatisfactory ab initio; but remaining without any amendment as it has for fifteen years has lamentably failed to keep this branch of the law abreast of changing developments in the commercial and industrial life of the nation, notably in the concepts of assignment apart from goodwill and the registra- tion of permitted users by way of licence. A Committee has recently been appointed, however, charged with the duty of examining the recommendations that have been made for revision and for proposing, if deemed advisable, a new statute. In order to complete the examination of the subject, one minor point may be mentioned. In 1938, the Shop Cards Registration Act 55 was enacted, providing for registration of union labels and cards. Section 9 of this act provides a right of action "by any labour union which has complied with the provisions of this Act as to registration, or by any authorized executive thereof, against any person, firm, labour union, association, or corporation, al- leged to be using without permission the Shop Card of such labour union". This section was, however, limited strictly in its scope to adhere to the general principle that nothing in the act should enable any suit, action, garnishee, interpleader or other proceeding to be brought, had or maintained against a labour union, except for the purposes of the act.56

Industrial Designs When Parliament enacted the Unfair Competition Act, 1932, it repealed all the sections of the Trade Mark and Design Act relating to trade marks and amended the balance of its sections by striking out the words "trade mark" and "trade marks" and any other words exclusively relating to those words.,, The result was to leave hanging, in mid-air, a series of sections numbered, in chronological order, 1, 2, 22 and 24 to 52 inclusive, and entitled 55 2 Geo. VI, c. 41 . 56 Sub-s. 2. 57 S. 61(2)

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by the King's Printer, without statutory authority, "The Design Act",58 Any criticisms that have been levelled against the Unfair Competition Act could be taken as compliments if levelled against the emasculated sections of the Trade Mark and Design Act relating to designs. No useful purpose would be served by an attempt to indulge in superlative condemnation and it would, therefore, be well merely to repeat what Maclean J. said of it in Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd. : The scope of this part .of the Trade Mark and Designs Act is difficult of definite ascertainment or construction. It is a piece of legislation that seems flimsy and incomplete, ill adapted for its intended purposes, and is seriously in need of amendment ." Notwithstanding the learned judge's observations concerning those sections, Parliament repealed all the sections dealing with trade marks four years later and substituted in their place the Unfair Competition Act, but left the sections relating to designs entirely without revision. A new draft act respecting industrial designs was submitted by the Secretary of State for the considera- tion of interested persons, prior to the session of 1934, but no action was taken on the draft bill by Parliament. For some reason, nothing has been done about the matter since.

Copyright On January 1st, 1924, the new Copyright Act, which had been enacted in 1921, came into effects° Prior to that date copyright in Canada was in a most confused state, depending partly on the Canadian Act of 1875 (later carried into the Revision of 1906) which required registration at Ottawa, partly on the Imperial Literary Copyright Act of 1842 which called for registra- tion at Stationers' Hall in London,- and partly on the Imperial Dramatic Copyright Act of 1833. The effect of the requirement of registration under the Act of 1906 was to deny to Canada membership in the International Copyright Union of Berne, thus constituting a very serious hardship on Canadian authors. The Act of 1921 was, in almost its totality, copied from the Imperial Act of 1911. It repealed all existing - statutes relating se S. 61-(2) of the Unfair Competition Act, 1932, makes no change in s. 1 of the Trade Mark and Design Act which gives it its short title by statutory authority . ss [1928] Ex. C.R. 159, at p. 162. See also Jones v. Teichman, [19301 Ex. C.R. 103, per Audette J. ea Now R.S .C., 1927, c. 32, as amended by c. 8, 1931, c. 18, 1935, c. 28, 1936, c. 27, 1938 .

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to Canadian copyright without prejudicially affecting any rights existing at the time of the repeal.61 The act, which is much more favourable to authors than the pre-existing law, provides that, subject to the provisions of the act, copyright shall subsist in Canada in the case of every original literary, dramatic, musical and artistic work if the author was, at the date of the making of the work, a British subject, a citizen or subject of a foreign country which has adhered to the of 1908 and the Protocol of 1914, or resident within his Majesty's Dominions; and if, in the case of a published work, the work was first published within His Majesty's Dominions or in such foreign country.6 2 Under the present law copyright is automatic. It requires no registration or other formal act and confers a right in an Canada'sunpublished as well as in a published work.6 3 adherence to the Berne Convention thus became possible. This adherence was signified by Order in Council P.C. 1395 of July 27th, 1923. On April 10th, 1928, it reiterated its adherence as a full contribut- ing member of the Union, having theretofore enjoyed as a part of the British Empire. By Canada's adherence to the Berne Convention, Canadian authors, artists and composers have been, since January 1st, 1924, entitled to full copyright protection in all the countries of the Union without the performance of any formalities. American authors are entitled to Canadian copyright and reciprocity exists save that Canadian authors must comply with the formalities of the American statute. Canadian authors are also entitled to copyright throughout the Empire without the performance of any formalities. By the Copyright Amendment Act of 1931 64 there was setup a new system applicable to those societies whose business it is to acquire the performing rights in copyrighted works and to license their performance to others. The formation of the Canadian Performing Right Society followed the institution of a similar body in Great Britain and of ASCAP in the United States. Under this system the dealer in performing rights has his sole right to perform any particular musical composition in public qualified by a statutory licence vested in everybody who pays or tenders 11 S.47. 11 S.4 (1) . 63 Gribble v. Free Press Ltd., [1932] 1 D .L .R . 169, at p. 176 ; Fiel v. Lemaire, [1940] Ex. C.R. 21, at p. 33 ; Zamaeoïs v. Douvilte (1943), 3 Fox Pat. C. 44. 11 C . 8, as amended by s. 2 of c. 28, 1936, and s. 1 and s. 4 of c. 27 of 1938.

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to the dealer, a fee, charge' or royalty which has been fixed by the Copyright Appeal Board and notified in the Canada Gazette. All such societies are required to file . a schedule of their fees with the Copyright Appeal Board which has vested in it authority to control and approve the scale of fees. As pointed out by Duff C. J. in Vigneux et al. v. Canadian Performing Right Society Ltd. "that seems like a revolutionary change, but it is evident that the realized in 1931 that this business in which the dealers were engaged is a business affected with a public interest".ss The Act of 1921- is an excellent example of legislative pla- giarism at its worst. At first glance it seems to bear no relation to the Imperial Act of 1911. ®n a further reading and comparison of the individual sections it turns out to be much the same as the Imperial Act, except that the sections have been rearranged and altered in comparative sequence ; it then appears as a topsy-turvy imitation of the Imperial Act., as though its draftsmen hàd some hope that they might indulge in the gentle art of legislative passing-off without getting"caught at it. The legislative wires appear to cross at section 19, which is in substantially the same terms in each statute although the Imperial section relates only to musical works, whereas the Canadian section relates to musical, literary and dramatic works. Apart from this one point of coincidence the , draftsmen of the Canadian statute evidently tried the shell-game, jumbling the sections into a mere hodge-podge arranged mainly, according to whim. If the same thing were done in connection with an ordinary literary or dramatic work it would immediately be stigmatized as plagiarism and colourable imitation. Copyright is now automatic. There need be no formality and no registration. But the Copyright Act contains no less than thirteen sections" which provide a complicated system of regis tration. The Imperial Copyright Act contains no provisions for registration and they are, df course, utterly needless and useless. It is a source of some speculation why the Canadian Parliament persisted in keeping alive such an anachronism as the maintenance of a register of copyright with all the personnel and expense that such a system requires. Unfortunately some of the sections of the Copyright Act as it appears in the Revision of 1927 have not been copied, and thus make no sense whatever. This is due to the fact that those 'charged with J transcribing these sections from the ss (1943), 3 Fox Pat. C. 77, at p. 80. 66 Ss. 29-41.

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original act of 1921 were so careless as not even to compare the result they had achieved with the model they had used, and it is a commentary on the quality of application and skill of those persons charged with the revision of 1927 that no better check was made of the results of their efforts. It is somewhat startling to realize that errors of this type can be made and apparently not discovered and that the office consolidation of the act repeats the same errors slavishly and without any explanation directing the public to the words of the original statute. It would seem not too much to expect that those charged with printing the revision of statutes should at least be able to copy correctly.s' In the courts there has been little copyright litigation and what has taken place has been of an unspectacular nature. In the political field this type of exclusive right enjoys an undisturbed and respect for which its brother, the patent of invention, longs in vain. Both are the reward of merit and have their origins in the productions of the brain. Both are exclusive privileges recognizing the contributions made by authors and inventors. But each enjoys a different reward and a different fate. The patent of invention endures for only seventeen years and both the patent and the patentee are vilified and threatened. Patents are said to be baneful monopolies and the chief power and foundation of cartels and combines. The patent system is said to be outworn and should be destroyed. But the author of the veriest drivel, the artist of the vulgar comic strip and the composer of Tin Pan Alley receive copyright for the term of their lives and fifty years after death. And no voice is ever heard crying of the iniquitous monopoly of copyright.

Conclusion W. S. Gilbert, with tongue in cheek, said "The law is the true embodiment Of everything that's excellent." Too many writers of the law think and say so - without tongue in cheek. So far as concerns the law of industrial and intellectual property, Canada has not very much to be proud of. The majority of patents of invention that come before the courts for decision are struck down as valueless by judges unskilled in the sciences and arts to which they relate. The statutes that regulate the four branches of the subject are the product of insufficient thought and less experience, or else consist of copies which come 67 See s. 42(2) (11), line 5; and s. 42 (3), line 6.

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late into the picture or show the ridiculous stigmata of -colourable imitation and,careless plagiarism. Every so often the Government decides, after considerable pressure, that a new statute is needed in one branch of this field of property. In Great Britain we have seen the magnificent results that can be achieved by the appoint- ment of independent committees of persons having a deep interest in the subject and willing to devote the necessary time to it. The Reports of the Herschell Committee of 1887, the Goschen Com- mittee of 1933-1934 and the Swan Committee of 1945-1947 are all models of scholarly research, patient investigation and sound recommendation. If we can have that type of committee appoint- ed to examine and report on the modernizing of our system of law in- the field of industrial , and intellectual property we shall be enabled to obtain relief from the defects which have marred it in the past and disfigure it in the present and which constitute a withholding of adequate reward from our inventors, and of pro- tection from our traders of which we, as a nation, ought to be thoroughly ashamed: