Dominique Pomerleau1 and Isabelle Riedl2
1 Partner, Ph.D., Metallurgical Engineering, P. Engineer, Patent Agent in Canada and in the United States
2 Ph.D., Medical Sciences and Patent Agent

In October 2022, the Federal Court of Canada reaffirmed the strength of the protection provided by registering an industrial design, a protection mechanism that is often overlooked and sometimes forgotten by manufacturers.

Crocs, Inc. learned this early on. Having registered industrial designs in the U.S., but not in Canada, to protect the shape and configuration of its original clog, it quickly saw copies invade the Canadian market. Following a U.S. trial that ruled in its favour, Crocs, Inc. quickly changed its intellectual property protection strategy and registered 35 industrial designs for shoes, clogs, and sandals between 2007 and 2009 in Canada alone. Chart 1 below represents the number of industrial designs registered by Crocs, Inc. in Canada and the U.S. over the last 20 years.

Source: Orbit™ Questel database.

The implementation of this new intellectual property protection strategy allowed Crocs, Inc. to win its case in the Federal Court of Canada in October 2022. Indeed, the Federal Court found that registration number 120939, protecting the Crocs Mammoth™ clog featuring a faux fur lining and flapped collar, was infringed by the manufacture and sale of the Fleece Dawgs™ clog by Double Diamond Distribution Ltd. (hereinafter Double Diamond).

Source of the Fleece Dawgs image: Crocs Canada Inc. vs. Double Diamond Distribution Ltd., 2022 FC 1443.

The Court found that Crocs, Inc.’s industrial design was original and valid, and that Double Diamond’s clog infringed it because it was not substantially different from the registered design. Although the trial took place after the expiration of the term of protection for registered design number 120939, Crocs, Inc. was able to win the case. According to the Court, the Fleece Dawgs™ clog incorporated many of the distinctive features of the registered clog design, namely the overall shape, the fur collar flap, the side disc/rivet, and the visibility of the lining through the holes on the front of the clog. Finally, this judgment reiterated that certain features of the registered industrial design are not prohibited from having a utilitarian character, provided that they do not have a solely utilitarian function. In its judgment, the Court ordered Double Diamond to pay more than CAD 650,000 for infringing Crocs, Inc.’s industrial design. Moreover, had the Federal Court’s decision been issued during the term of protection, Crocs, Inc. could have prohibited the manufacture and sale of the Fleece Dawgs™ clog in Canada, blocking one of its competitors.

This judgment shows that the registration of an industrial design, which makes it possible to protect the appearance of a product (the shape, configuration, pattern and/or ornament in a finished article), remains a useful form of intellectual property to slow down, stop and/or block its competition. Unlike a patent, which covers only the functional aspect of a product, an industrial design aims at protecting the visual aspect of a finished article. Industrial designs are not evaluated on the aesthetic quality of their visual characteristics, but rather on their originality.

It should also be noted that, in recent years, important changes have occurred in Canada with respect to industrial designs, often for the benefit of applicants. First, the term for exclusive rights in Canada has been extended from 10 years from the date of registration to 15 years from the date of filing. The U.S. offers the same term of protection as Canada, whereas the term of protection for a Community design in Europe can extend to a maximum of twenty-five (25) years. Moreover, in 2018, Canada joined the Hague Agreement, allowing applicants from member countries to register in multiple jurisdictions using a single application with the World Intellectual Property Office. This option is interesting, especially from an economic and procedural point of view, for applicants who wish to protect their designs in many countries/regions.

Finally, the effect of an appropriate deterrent marking for a product protected by an industrial design registration should not be overlooked. This product and all associated literature can be identified with the Ⓓ symbol, along with the registration number and company name. History has shown that there can be some confusion between patent and industrial design deterrent markings, particularly in the U.S. where the designation “Design Patents” is used to refer to industrial designs.

This confusion has been highlighted over the past decade in the legal battle between giants Apple™ and Samsung™. This fight has caught the imagination, notably because of the huge sums of money awarded in damages in a 2012 ruling, sums amounting to upwards of $1 billion (though later revised downwards). In the media, this saga has often been referred to as the “Patent War”, although in fact many of the lawsuits involved a combination of patented and design protected elements.

Thus, the registration of an industrial design is appropriate and offers an undeniable competitive advantage since the appearance of a product commonly distinguishes it from other competitors’ products and influences consumers when they make purchases. Moreover, unlike patents, industrial design registrations are quick, easy to obtain, inexpensive and allow identification of protected products with an intellectual property title.