When is an Industrial Design Infringed?
A decision of the Federal court helps to clarify the correct approach to determine when an industrial design registration has been infringed. Crocs Canada, Inc. v. Double Diamond Distribution Ltd 2022 FC 1443
Crocs Inc is the owner of Canadian Industrial Design Number 120939 (the “939 Design”). The design consists of the visual features of a shoe shown in the drawings, whether those features are features of shape, pattern, configuration or ornament or are a combination of any of these features, with non-design portions of the article shown with stippled lines. The tread pattern of the sole forms no part of the design. The front perspective view of a shoe embodying the design is shown below
The commercial version of the 939 Design was sold by the plaintiff to the public under the name, Mammoth clog. Canadian sales of Mammoth clogs between 2011 and 2017 were nearly $2 million in Canadian dollars.
The plaintiff alleged that the defendant had sold a product known as a Fleece Dawg since 2002. The Fleece Dawg was alleged to infringe the 939 Design. A side view of a Fleece Dawg clog is shown below
The plaintiff brought action for infringement of the 939 Design. The defendant alleged that the 939 Design was invalid on the basis it comprised more than one design contrary to the regulations under the Act; was not original having regard to the prior art; and the design features were dictated solely by utilitarian function. Infringement was also denied.
At trial the plaintiff relied on the evidence of an independent consultant with more than 40 years of experience in the footwear industry. He is a bioengineer and footwear expert. His expertise includes footwear design, research and development, structure, function, production, and knowledge of intellectual property design protection.
The consultant concluded the 939 Industrial Design was markedly different from the sparse prior art in a field which was not crowded. In his opinion, the 939 Design was pioneering in a new field, a subfield of footwear aesthetics, that was original with nothing like it previously in the market. Further, no feature of the 939 Design was dictated solely by function; For example, the fleece provides warmth, but it is not the only possible way of doing so when placed inside a shoe. In addition, the fleece provides no warmth on the outside of the shoe when folded over to form the collar but instead provides ornamentation.
The Judge observed that the Industrial Act protects original designs involving “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye,” and that have been registered under the Act. A certificate of registration is rebuttable evidence of the design and its originality, the name of the proprietor and the person’s proprietorship, the commencement and term of registration and, significantly, compliance with the Act.
While the defendant argued the registration disclosed different designs, there was no merit to this argument since the differences were an insubstantial variation not a new design.
As for the alleged lack of originality the defendant failed to satisfy the onus on it to prove through admissible evidence, on a balance of probabilities, prior art that invalidated the 939 Design, having regard to the rebuttable presumption of originality. In addition, the Judge accepted the plaintiff’s expert’s evidence that the 939 Design pioneered a new, and uncrowded, subfield of footwear aesthetics original in overall appearance, with nothing like it previously in the market.
As for the contention regarding lack of originality, the defendant had not satisfied its burden of establishing that features of the 939 Design were dictated solely by utilitarian function, contrary to the Act. The Federal Court of Appeal recognizes that features of an industrial design that are functional but also appeal to the eye can be protected. Only features of an industrial design whose form are dictated solely by function are excluded from protection.
The test for infringement under the Act requires an analysis from the perspective of an “informed consumer” who is familiar with the relevant market to: (a) examine the prior art and the extent to which the registered design differs from any previously published design; (b) assess the design for any utilitarian function, or any method or principle of manufacture or construction, which precludes protection for these things; (c) examine the design itself to determine the scope of protection based on the figures and description in the registration; (d) analyze the registered design and alleged infringing article, considering the first three factors.
The Judge agreed with the plaintiff’s expert, that the 939 Design and Fleece Dawgs shoe were “nigh identical,” with slight differences in ornamentation, because they share key features absent from the applicable prior art, i.e. the overall shape, the fold over fleece collar, the decorative discs, and the lining visible through the fingertip sized holes in the band or vamp on the front top of the shoe. The fact there may be one or two fewer and differently shaped holes in the vamp of the Fleece Dawg clog were an example of insubstantial differences and insufficient to avoid a finding of infringement.
The plaintiff’s action was allowed, and the plaintiff was awarded an accounting of the defendant’s profits and related relief.
Obtaining Industrial design registrations is an important part of protecting product shape and appearance. When a registration is obtained in a timely fashion, the design can be protected by bringing an action for infringement during the ten-year term of protection granted by the registration. An application for a design must generally be filed within one year of disclosure of the design to the public.
Toronto, November 2022
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These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.