A recent decision of the Superior Court of the Province of Québec decided that the defendant had infringed the plaintiff's industrial design.
A design for the purposes of the Industrial Design Act means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to or are judged solely by the eye.
In order to register a design, an applicant must file an application which includes a declaration that the design was not, to the proprietor's knowledge, in use by a person other than the applicant at the time the design was adopted by the applicant. In other words, the design must be original and there must be some substantial difference between the new applied-for design and pre-existing designs.
A design may be registered only if an application is filed within one year after the publication of the design in Canada or elsewhere. In general terms, publication means offering or making an article to which the design is applied available to the public. The duration of the registration is, in general terms, 10 years subject to payment of appropriate and timely fees to the government.
During the existence of the registration no person shall, without the licence of the owner of the design, make, import, sell or offer for sale any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied.
The plaintiff designed and sold steps for entry into swimming pools. It was alleged that the defendant was selling steps which infringed the plaintiff's registered industrial design relating to the shape of a step.
In finding that infringement had occurred, the Court adopted what the editor of this newsletter had written in the leading text book as follows:
In light of the reference in the definition of "design" to "features…that, in a finished article, appeal to and are judged solely by the eye," it appears that infringement must be determined on an ocular basis. Further, in light of the definition of design and the cases which have considered it, the point of view of a customer must be taken. […] The primary concern is what the article looks like, not what it does. The emphasis is on the visual image conveyed by the article […].
The appearance of the allegedly infringing article must be compared to the appearance of the registered design. […]
… the doctrine of "imperfect recollection" has application to the question of infringement in design cases […] imperfect recollection may be relevant in determining the significance of specific features of a design.
There have been relatively few decisions involving industrial designs. This decision, once it is translated and reported, may be helpful in the future. We cannot quarrel with the approach that the Trial Judge adopted.