Industrial design registrations (or “design patents” as they are referred to in some jurisdictions) are attractive for a number of reasons, including their low cost and often easy prosecution before examiners. However, as a recent decision of the Federal Court of Canada reminds us, where a design is situated in a crowded prior art field and the drawings for the design are narrow in scope, then the ability to enforce that design registration may be more limited.

In AFX Licensing Corporation v HJC America, Inc, 2016 FC 435, Justice Diner held that the plaintiff’s industrial design registration for a “Helmet Face Shield” (Canadian Industrial Design Registration No. 133964) was valid, but not infringed.

Under Canada’s Industrial Design Act, the owner of a registered industrial design retains exclusive rights over the design and any design that does not differ substantially from it.

Following the guidance provided in earlier industrial design registration decisions of the Federal Court, Justice Diner outlined the four steps required to determine infringement:

  1. an examination of the prior art: because a registered design may be infringed where the accused design “does not differ substantially from it”, prior art must be considered in assessing the scope of “substantial difference”;
  2. an assessment of utilitarian function and any methods or principles of manufacture or construction: while functional features of designs may be protected, only those features whose form are dictated solely by function are not protected. Similarly, design features that stem solely from methods and principles of manufacture and construction are excluded from design protection;
  3. an analysis of the scope of protection outlined in the language and figures of the registered design itself: based on a design registration’s written description and/or clear indications in any associated illustrations, an analysis is required to determine whether the registration covers only a portion of an object or a whole object; and
  4. in light of all of the above, a comparative analysis of the registered design and the allegedly infringing product: taking into account the above, if the accused design does not differ substantially from the registered design, then there is infringement. The perspective for this analysis is that of an “informed consumer” (i.e., a person familiar with the market at issue).

The Court reviewed a number of prior art face shields, and determined what aspects of the registered design were “dictated solely by function”.

Regarding the prior art, the Court concluded that the design registration at issue in this case “entered a crowded field in which the notion of an outwardly moulded viewing area was already present in some forms and where the general contouring and shape of a helmet face shield was also well-defined. Thus, the degree of difference necessary for a newer design to evade the protection afforded ID 964 is small: ‘If only small differences separate the registered design from what has gone before then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement.’ ”

Regarding functional aspects of the design, they included the shape insofar as it is contingent upon fitting with a helmet, a tab to raise the shield, hinges for the shield, and a viewing area that facilitates vision and sightlines of a user.

In addition, the Court considered the scope of protection based on the design registration itself. In this regard, the Court found that the registered design consisted of the entire face shield, and not just a specific element (i.e., “the outwardly moulded projection and the smooth contoured surface around the viewing area”) as urged by the plaintiff. Notably, the Court stated that “[h]ad the Plaintiff wished to uniquely highlight that element of the shield for protection, that could have been done in a variety of ways, including through additional explanatory text, diagrammatic detailing (such as dotted lines, shading or highlighting), or a combination of both.”

Ultimately, based on the above findings and the factual differences between the registered design and the accused design, the Court found that an informed consumer would conclude that there were significant substantial differences between the two designs. Regarding one of the features of the plaintiff’s registered design (namely, double-walled anti-fogging), the Court specifically found that the patent regime, as opposed to the industrial designs regime, was the proper platform for seeking protection of such a functional feature.

On the issue of validity, the registered design was held to be valid. In this regard, the prior art differed substantially from the design and features of the design alleged to be purely functional did not invalidate the registration, as there was at least some effort to appeal to the eye with respect to those features.

Lessons for industrial design prosecution

The plaintiff’s experience in this case informs several practical tips that design applicants can use to increase the likelihood that they will receive the broadest design protection possible.

One option when filing a design is to show those portions of the article to which the design is applied but that are not actually part of the design in dashed lines. This has the effect of isolating and emphasizing what is original about the design, which can make it difficult for defendants to avoid infringing the related design registration by changing immaterial aspects of their products.

ID 964 shows the face shield entirely in solid lines. As noted above, Justice Diner accordingly refused to interpret this design as focusing only on the “outwardly moulded projection and a smooth contoured surface around the viewing area” notwithstanding the plaintiff’s arguments, which it supported with expert testimony. If the plaintiff had shown everything but that moulded projection and contoured surface in dashed lines, Justice Diner could have properly focused only on those portions of the face mask, which would effectively have broadened the scope of the design registration.

However, broadening the design registration by showing portions of the article in dashed lines has the side effect of increasing the likelihood that the design registration will either not be granted for lacking originality, or that even if granted a court will find it invalid for the same reason. A design applicant can accordingly file multiple versions of its design, called “variants” in Canada, of different scope in the same application. For example, the applicant for ID 964 could have filed a single design application with one variant showing the face mask entirely in solid lines and a second variant showing only the “outwardly moulded projection and a smooth contoured surface around the viewing area” of the face mask in solid lines. While the Canadian IP Office would likely have eventually required a separate design application be filed in the event the applicant wanted both designs to register, the applicant could initially have elected to prosecute the broader design. If the Canadian IP Office rejected that broader design for lacking originality, the applicant could then have fallen back on the narrower design. Filing multiple variants in this way therefore allows an applicant to aggressively pursue broader protection while keeping a narrower design in reserve as insurance.

While the Canadian IP Office is quite strict in requiring that designs that differ only by their use of dashed lines be filed in separate applications, non-Canadian IP offices may be more relaxed in allowing multiple variants to issue together in the same registration. Without paying a filing fee for each design variant, in certain jurisdictions applicants may therefore be able to get protection for multiple variants in a single design registration.

Some jurisdictions, such as China, do not allow dashed lines to appear in a design application. Despite this, as a general rule the same set of figures used in Canada can be used as the basis of a design filing internationally, with national amendments being made such as to delete the dashed lines, as required.

While hindsight is 20/20, applying these techniques to ID 964 may have permitted ID 964’s applicant to either feel comfortable pursuing a broader design from the outset or to get multiple registrations for variants of different scope, all of which could have been asserted in litigation.

Conclusion

While industrial designs may be attractive to those seeking registered IP protection for their design-related innovations, applicants should be mindful of the limitations of industrial design protection. In particular, applicants ought to be especially careful with which aspects of a design are claimed versus which are disclaimed (e.g., identified in broken lines), particularly where a design is situated in a crowded prior art field. Otherwise, the ability to enforce any resulting design registration may be more limited. Moreover, features of a product that are purely functional and have no aesthetic aspect can only be protected under the patent, and not the industrial design, regime.