This piece originally appeared in Canadian Intellectual Property Review 119 (June 2013).

ABSTRACT

In recent years, design protection has garnered interest for protecting the appearance of a product, particularly in view of high-profile cases worldwide. In Canada, a Federal Court decision recently clarified the principles applicable to industrial design infringement. The US and Canadian tests for infringement are similar in a number of respects. Although design infringement is assessed on the basis of an overall impression of the product, and thus calls for some subjectivity in assessing similarity, past decisions provide guidance for practitioners as to how close is “too close.” To that end, a review is provided of 19 successful industrial design infringement decisions, including a visual comparison between the registered design and product at issue. Also reviewed are the benefits of obtaining industrial design protection in Canada. The North American market is tightly integrated; many Canadian manufacturers and exporters view the United States as their main market, and US companies often have parts made in Canada. Obtaining design rights in a country that is the source of supply of infringing articles enables rights holders to stop infringement at its source. The relatively low cost of litigation in Canada, the lack of jury trials, and the ability to recover costs justify the expense of obtaining Canadian industrial design protection. Where the product has a unique function in addition to a unique appearance, rights holders should consider obtaining both patent and industrial design protection.

1.0 INTRODUCTION

High-profile cases have attracted international attention to design rights for protecting the appearance of a product or article. In the United States, the original $1.049 billion dollar award in theApple v Samsung litigation was among the largest US patent infringement jury verdicts, and the bulk of this award for utility and design patent infringement was likely driven by the profit disgorgement remedy available for infringement of design patents. In Canada, the Federal Court recently rendered its first industrial design infringement decision on the merits, in the matter of Bodum USA, Inc v Trudeau Corp, since an amendment to infringement statutory provisions. A discussion of industrial design protection in Canada and a comparison with the United States follow, covering an overview of a few salient points, the application and registration process, infringement, validity, remedies, and benefits of obtaining protection in Canada.

2.0 OVERVIEW

2.1 Governing Law

In the United States, design patents are governed by sections 171, 172, 173, and 289 of Title 35 of the United States Code, and defined as being “for an article of manufacture.” In Canada, industrial designs are governed by the Industrial Design Act and Regulations, separate from patent legislation. The Act defines a design as “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.”

2.2 Term

The term of protection of a Canadian industrial design is 10 years from registration, while that of a US design patent is 14 years.

2.3 Priority

The Paris Convention limits priority to six months for industrial designs for both the United States and Canada.

2.4 Publication

Consistent with US practice, industrial design applications are not published in Canada.

3.0 APPLICATION AND REGISTRATION

3.1 Title

In Canada, the title must identify the finished article in respect of which registration of the design is sought. This requirement is similar to that in the United States, which requires that the title designate the particular article to which the design applies. The title in the United States does not limit the scope of protection, but must correspond with the claim that recites the article of manufacture and limits the scope of protection. However, in Canada the title does limit the scope of protection. Accordingly, care should be exercised in selecting an appropriately broad -title. Consulting the Canadian database of industrial design registrations for accepted titles may be helpful.

3.2 Restriction

Both the United States and Canada require that an application be limited to a single design. However, while the United States allows for multiple embodiments that are not patentably distinct to be included in the same application, Canada allows variants that are not substantially different. Including variants in a Canadian industrial design application can broaden the scope of protection.

If the Canadian Intellectual Property Office (CIPO) considers that the industrial design application is directed to more than one design, then it will require restriction. Where restriction is required, it will be necessary to maintain one design in the application and delete the other designs from the application. However, it is possible to file a divisional application in respect of any of the deleted designs. Any such divisional application must be filed before the application that met with restriction proceeds to registration.

3.3 Drawings

As in the United States, drawings are of great importance in determining the scope of protection. Usually, design portions are shown in solid lines, and any non-design portions are shown in broken (stippled) lines. Techniques for broadening scope include using stippled lines, variable/indefinite length break lines, and bold wavy boundary lines. Examples are provided in the examination guidelines of the Industrial Design Office Practices at Annex B.

4.0 INFRINGEMENT

The US and Canadian tests for infringement have some similarities. In the United States, the test for design infringement was originally formulated in the 1871 decision of Gorham Company v White by the US Supreme Court, which held that there was infringement “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same.” This test, known as the “ordinary observer” test, was modified in Egyptian Goddess Inc v Swisa Inc by the Federal Circuit, which added:

when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art … Where there are many examples of similar prior art designs … differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.

In Canada, infringement occurs when the registered design or a design “not differing substantially therefrom” is applied to an article without permission. Infringement is assessed from the point of view of the “informed consumer,” according to the recent decision in Bodum, which considered the current statutory provisions on industrial design infringement. The Industrial Design Act provides that, “in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account.”

In Bodum, the Federal Court heard an action for infringement of industrial design registrations for drinking glasses that had double walls. The court found that the scope of the designs was limited by features that are dictated solely by a utilitarian function of the article—namely, the space between the double walls. As such, functional features are ignored in an infringement analysis, because similarities arising from utilitarian function are not taken into account. Further, comparing the designs and prior art, and ignoring differences in construction and material, the court found that the scope of the designs was limited by prior art having similar lines or shape. The court applied the infringement test of whether the accused articles differed substantially from the designs, assessed by the court from the point of view of how the informed consumer would see things. In its assessment, the court conducted a side-by-side comparison between the designs and accused articles. The accused articles were much more similar to the prior art than to the designs. In holding that there was no infringement, the court noted that the accused articles had none of the features of the configuration of the designs, including lines, proportions, and shape.

Although design infringement is assessed on the basis of an overall impression of the article of manufacture, and thus calls for some subjectivity, past decisions provide guidance to practitioners as to how close is “too close.” To that end, a review of 19 successful industrial design infringement decisions follows. For some of these decisions, a side-by-side visual comparison is provided between representative images of the registered design and accused article. A number of old decisions did not include images or discussion of prior art, but, when possible, images were obtained from court records. As can be seen from the review below, infringement (or a serious question in respect of infringement) was found where the article was very close to the registered design, as in the case of knock-offs.

4.1 Findlay v Ottawa Furnace and Foundry

In the 1902 action for infringement, Findlay v Ottawa Furnace and Foundry Co, the Exchequer Court held that the manufacture of a cooking stove in Canada infringed Industrial Design Registration No 1,315. The court considered former infringement provisions of the Industrial Design Act, which prohibited application of the design or a fraudulent imitation thereof. The defendants procured a stove made by the plaintiffs according to their industrial design; took it apart to make patterns of the parts; and, using these patterns, made a stove with modified ornamental scroll-work, a different medallion, and an exterior top that was almost the same with the exception of the name. Notwithstanding these differences, the court found that there was an “obvious imitation” of the industrial design and, therefore, granted a permanent injunction restraining the defendants from using the industrial design, an order to dispose of infringing stoves, and costs.

4.2 Pratico v Panzerra et Fortini

In the 1961 decision of Pratico v Panzerra et Fortini, an application for an interlocutory injunction to restrain manufacture in Canada, the Quebec Superior Court held it was established prima facie that there was a substantial question to be tried—namely, “infringement” of Industrial Design Registration No 23,854 for an ornamental ear of wheat. Accordingly, the court granted the interlocutory injunction until the disposition of the case. No reported trial decision could readily be found.

4.3 Ribbons (Montreal) v Belding Corticelli

In another 1961 action for infringement, Ribbons (Montreal) Ltd v Belding Corticelli Ltd, the Exchequer Court held that the defendant’s manufacture infringed Industrial Design Registration No 22,797 for a transparent ornamental display. The defendant did not deny that it applied the design or an “imitation” thereof to its wares, but alleged that the registration was invalid for, inter alia, lack of subject matter and late registration after publication. The court disagreed and granted a permanent injunction, an order for delivery-up of infringing articles, and costs.

4.4 Cimon and Tiengo v Bench Made Furniture and Edwards

In a 1964 action for infringement, Cimon Ltd and Tiengo v Bench Made Furniture Corp and Edwards, the Exchequer Court held that manufacture and sale of a sofa infringed Industrial Design Registration No 25,140. The court held that the registration was directed to a nascent design, radically different from the prior art. Specifically, the distinctive feature of the industrial design was an oval-shaped back, almost uninterrupted flow of the seat, and slightly curved arms. A few months after the plaintiff’s sofa was shown at a furniture show, the defendant company started manufacturing and selling a sofa that was calculated to look as much like the plaintiff’s sofa as possible. The addition of buttons to the upholstery, enlarging of decorative walnut design on the front, and use of different legs and back support structure did not detract from the fact that the defendants’ sofa looked less expensive than the plaintiff’s sofa. Despite these differences, the defendants’ sofa was “very similar.” According to the court, there was no doubt that it was the same design or a fraudulent imitation thereof. Both the defendant company, and its principal officer who directed that the design be applied to the article, were found liable. The court granted a permanent injunction, damages, and costs.

4.5 B Fertleman & Sons v Liberty Ornamental Iron

In the 1975 decision B Fertleman & Sons Ltd v Liberty Ornamental Iron Ltd, the Federal Court of Appeal considered an appeal from a decision granting an application for an interlocutory injunction to restrain use of wall units. The application judge had found that a prima facie case of infringement of Industrial Design Registration Nos 38,111, 38,112, 38,113, and 38,114 had been established. Illustrative of the inherent subjectivity in assessing design infringement, the court stated that, although it would not have granted the injunction under appeal if it had been in the position of the application judge, the court had not been persuaded that the application judge erred in exercising his discretion to grant the injunction. Accordingly, the court upheld the application judge’s finding of “apparent copying” of the industrial design and granted the interlocutory injunction. The underlying action for industrial design infringement was ultimately dismissed for want of prosecution.

4.6 Global Upholstery v Galaxy Office Furniture

In a 1976 action for infringement, Global Upholstery Co. Ltd v Galaxy Office Furniture Ltd, the Trial Division of the Federal Court held that manufacture and sale of a stacking chair infringed Industrial Design Registration No 39,203. The infringing vendor assembled components received from its supplier. The vendor conceded that there was no difference between the article and the description in words in the registration. In both the design and infringing chair, double tubing formed the arms of the chairs. However, in the design the outside tube was offset and defined the frame of the seat, while in the infringing article the inside tube was offset and the inside tube defined the seat. These differences in appearance were not significant. Additions were also not significant—namely, adding upholstery on the arms and using rubber feet. The infringing device produced at least “the same effect.” Finding intentional copying and imitation, the court granted a permanent injunction, damages, an account of profits, and costs.

4.7 Bardeau v Crown Food Service Equipment

In a 1982 application for an Anton Piller order (comparable to an impoundment order in the United States), Bardeau Ltd v Crown Food Service Equipment Ltd, the Ontario High Court of Justice held that there was an extremely strong prima facie case of infringement of an industrial design for a kettle and skillet. It seemed doubtful that the defendants, who left the employ of the plaintiff company to compete, would have entered the market in a very short period of time without the benefit of prior documents, plans, and sketches. There was strong evidence that the defendants manufactured and sold products that were “strikingly similar” to those of the plaintiffs and possessed copies of documents belonging to the plaintiffs. On this basis, the court granted the Anton Piller order to search the premises of the defendants and seize evidence without warning. No reported trial decision could readily be found.

4.8 House of Faces v Leblanc

In House of Faces, Inc v Leblanc, a 1984 application for an interlocutory injunction to restrain manufacture and sale of cosmetic trays, the Ontario High Court of Justice held that a strong prima facie case of infringement of Industrial Design Registration No 52,826 had been established. The defendant was a former senior employee of the plaintiff dealing with US expansion. Despite small differences, the defendant’s cosmetic trays were “closer” to the design than the prior art according to the court. The court concluded that, although the tray and the design were not exactly the same, distinctive features of the design had been used by the defendant. Accordingly, the court granted the interlocutory injunction and costs. No reported trial decision could readily be found.

4.9 Horn Abbot v Thurston Hays Developments

In Horn Abbot Ltd v Thurston Hays Developments Ltd, a 1985 application for an interlocutory injunction to restrain manufacture and sale of a game board called Sexual Pursuit, the Trial Division of the Federal Court held that a serious question to be tried had been established in respect of infringement of Industrial Design Registration No 49,423. A cursory glance led the court to conclude that the defendants had attempted to as closely as possible produce an identical copy of the design, including the hexagonal shape, in the hope that “minor and insignificant differences” would avoid infringement. The defendant’s game board included a wheel-shaped pattern with a central 6-sided hub and 6 straight spokes radiating from the hub, each spoke divided into 5 spaces, and an outer rim subdivided into 42 spaces, generally the same as the industrial design. The court granted the interlocutory injunction, together with costs in the cause. The underlying action for industrial design infringement was ultimately concluded with the plaintiff abandoning its claim for industrial design infringement because of the expiry of the design registration.

4.10 Alkot Industries v Consumers Distributing

In Alkot Industries Inc v Consumers Distributing Ltd, a 1985 application for an interim injunction, the Trial Division of the Federal Court considered importation of look-alike strollers for sale in Canada. The court held that both a serious question to be tried and a prima facie case had been established—namely, infringement of Industrial Design Registration No 54,309. The plaintiff disclaimed protection in the chassis and wheels, but sought protection in the form and cut of the stroller’s clothing and its linear quilting. The defendant’s stroller was an “almost perfect copy” with respect to the all-important form and cut and linear quilting of the design. The court granted the interim injunction until the disposition of an application for an interlocutory injunction, and costs. The underlying action for industrial design infringement was ultimately dismissed for want of prosecution.

4.11 Alkot Industries v Benjamin Stroller

In Alkot Industries Inc v Benjamin Stroller Company Ltd, the court heard a 1986 application for an interlocutory injunction involving the same industrial design and defendant’s stroller as discussed in section 4.10 above. The Trial Division of the Federal Court held that both a serious issue to be tried and a prima facie case of infringement had been established. It was noted that upon demonstration of obvious copying in industrial property cases, the alleged infringer should be enjoined until he can demonstrate a right to engage in that activity. Thus, where copying or clear infringement of a right is demonstrated, the burden shifts to the defendant. The court considered the defendant’s look-alike strollers. Despite differences, a visual inspection led one to conclude that copying must have occurred. The “copying was obvious.” It was inconceivable that the similarities between the registered design and defendant’s strollers could have resulted by chance. Colour was not an element of the registered design but it was an element that indicated that copying occurred. The quilting design was the same. Copying was not the critical issue, but rather whether there was a substantial similarity between the design and article such that one could have been said to infringe the other. While similarities demonstrated copying, they equally demonstrated substantial similarity. Substantial similarity existed between the designs of the two strollers. On the interplay between the description and photograph that accompanied the registration, the court noted that it was not appropriate to treat designs like patents. Although the photograph showed the entire stroller, the description focused on the quilting as being the primary feature of the design, and the quilting design was the same in the defendant’s strollers. The court granted the interlocutory injunction. The underlying action for industrial design infringement was ultimately concluded with an order on consent of the defendant declaring the industrial design registration valid and infringed.

4.12 Cookie Florist v Maiani

In Cookie Florist Ltd v Maiani (coba Bloomin’ Biscuits Cookie Bouquets), a 1987 application for an interim injunction, the Trial Division of the Federal Court considered Industrial Design Registration No 54,668 for a flower-like cookie. The plaintiff established a national reputation for quality and style of its long-stem cookies. Infringing cookies were sold in a “cloak-and-dagger” manner according to investigators. The court granted the interim injunction, together with costs in the cause. The underlying action for industrial design infringement was ultimately dismissed for want of prosecution.

4.13 Dutailier v Maribro

In Dutailier Inc v Maribro Inc, a 1988 action for infringement, the Trial Division of the Federal Court held that the manufacture and sale of a chair infringed Industrial Design Registration No 49,914. There was a clear case of copying. A modification made to the chair was not sufficiently major to avoid infringement nor was the defendant’s non-profit status. The plaintiff, who was active in Canada and the United States, claimed compensation for lost sales, but the court held that damages had not been properly proven. However, exemplary damages were granted, because the defendant continued to infringe after receiving a notice of the plaintiff’s rights in the industrial design.

4.14 LM Lipski v Dorel Industries

In LM Lipski Ltd v Dorel Industries Inc, a 1988 application for an interlocutory injunction, the Trial Division of the Federal Court considered the manufacture in Taiwan and the sale in Canada of a bed guard. With respect to infringement of Industrial Design Registration No 56,622, it was clear that the plaintiff had demonstrated a serious question to be tried and even met the test of a strongprima facie case. The plaintiff had an agent in the United States who dealt with the defendant from time to time. The plaintiff trusted the defendant, its exclusive distributor in Canada, to market the plaintiff’s products. However, the defendant manufactured competing products in Taiwan and sold them in Canada. There were three differences in the defendant’s bed guard: circles in the upper corners of the plaintiff’s design did not appear in the defendant’s bed guard; the defendant’s bed guard had an additional support piece in the middle of each half of the bed guard so that the elongated openings in the guard were eight rather than four in number; and the raised pattern in the centre of the guard differed from that of the plaintiff’s design. Despite these differences, which the court characterized as deliberate modifications, the overall appearance as well as the rest of the defendant’s bed guard were an exact copy of the plaintiff’s design. The bed guards were clearly closer to the design than the prior art. The court considered that the plaintiff would suffer irreparable harm if the injunction was not granted because sales by the defendant, who was the plaintiff’s former distributor, would deny the plaintiff access to the Canadian market. Accordingly, the court granted the interlocutory injunction. The underlying action for industrial design infringement was ultimately concluded with an order on consent of the defendants declaring the industrial design registration valid and infringed and granting a permanent injunction.

4.15 Thinkway Toys v Vicki Collections

In Thinkway Toys v Vicki Collections, a 1989 application for an interlocutory injunction, the Trial Division of the Federal Court held that the plaintiff had established that there was a serious issue to be tried as to whether use of the defendant’s dancing dolls infringed Industrial Design Registration No 64,308. The defendant’s dolls were clearly “exactly the same.” Accordingly, the court granted the interlocutory injunction. The underlying action for industrial design infringement was ultimately dismissed for want of prosecution.

4.16 Sklar-Peppler v Decor-Rest Furniture

In Sklar-Peppler Inc v Decor-Rest Furniture Ltd, a 1990 motion for an interim injunction until the disposition of the plaintiff’s application for an interlocutory injunction, the Trial Division of the Federal Circuit considered Industrial Design Registration No 65,825 for a sofa. The court held that the defendant’s behaviour in choosing to “closely emulate” the plaintiff’s sofa demonstrated conduct would lead one to conclude that the defendant might rapidly sell off a large number of its sofas in the market in the short term if an interim injunction was not granted. Accordingly, the court granted the interim injunction. Subsequently, an application for an interlocutory injunction in respect of industrial design infringement was refused, on the basis that, although a serious question to be tried had been established, the balance of convenience favoured the defendant. The parties ultimately discontinued the underlying action for industrial design infringement.

4.17 Promotions Atlantiques v Laurent

In Promotions Atlantiques Inc v Laurent, a 1992 appeal from a decision dismissing an application for an interlocutory injunction, the Quebec Court of Appeal considered a situation where the exclusive licensee suffered serious harm as a result of direct competition from the licensor. The licence agreement granted an exclusive right to manufacture, market, and sell the products described—that is, car mats, or derivative products covered by the patents or industrial designs specified. The court granted the interlocutory injunction restraining the licensor from manufacturing, distributing, selling, or marketing the products in Canada and the United States; ordered the licensor to deliver up all car mat moulds in its possession; and awarded costs against the licensor. No reported trial decision could readily be found.

4.18 Slim Line Design v Pacific Northwest Manufacturing

In Slim Line Design Ltd v Pacific Northwest Manufacturing Inc, a 1999 application for an interlocutory injunction, the BC Supreme Court considered the current infringement provisions of the Industrial Design Act, which prohibit application of the design or a design “not differing substantially” therefrom. The court held that, on comparing the drawings of the design with photographs of the defendants’ -machines, there was a clear question to be tried as to whether the defendants’ machines were substantially the same as Industrial Design Registration No 84,537 for a vending machine. The defendants pointed to differences in dimensions, proportions, and shape, as well as additional moulding and a cigar humidor. The court found that the differences were not so compelling as to put the success of the plaintiff’s action at trial beyond reach. An injunction was appropriate because the defendants did not have the financial means to satisfy any judgment against it. There was “remarkable similarity” in appearance between the industrial design and the defendants’ machines. On this basis, the court granted the interlocutory injunction. No reported trial decision could readily be found.

4.19 Hanson International v Whirley Industries

In Hanson International Inc v Whirley Industries Inc, a 2002 motion to strike out a statement of claim asserting Industrial Design Registration No 92,298 for a dual-compartment bottle, a prothonotary of the Trial Division of the Federal Court dismissed the motion. According to the prothonotary, it was not plain and obvious that, by offering or exposing for sale bottles in Canada, including through its website, the defendants had not infringed. Further, it was not possible to rule out that the defendants induced and procured the offer for sale and sale of bottles by a retailer. The action for infringement was ultimately settled. The underlying action for industrial design infringement was ultimately dismissed on consent of the parties.

Registered Design Accused Article

5.0 VALIDITY

5.1 Ornamentation versus Function

The United States requires that a claimed design be “ornamental,” in the sense of non-functional rather than aesthetically pleasing. Similarly, Canada defines an industrial design with reference to features that “appeal to and are judged solely by the eye” without requiring beauty and excluding designs dictated solely by function.

5.2 Novelty, Non-Obviousness, and Originality (Originality and Prior Publication)

While the United States requires that a design patent be new, non-obvious, and original, Canada’s requirements pertain to originality and prior publication. More specifically, Canada requires that the design was not in use by any other person at the time that it was adopted by the first owner; the design is not identical with or does not so closely resemble any other design already registered as to be confounded therewith; and the design is original, which involves at least a spark of -inspiration. Further, Canada requires that the application was not filed more than one year after the publication of the design in Canada or elsewhere. Publication in Canada means offering or making a design available to the public, and includes the sale of an article.

6.0 REMEDIES

In a Canadian action for infringement, the relief a court can grant includes an injunction, damages or profits, punitive damages, and the disposal of any infringing article or kit. The same criteria apply in granting interlocutory injunctions in respect of industrial design cases as in ordinary cases. However, the application may be somewhat less strict than in patent cases.

Such remedies are also available in the United States. While an account of profits may be ordered in Canada, in the United States, the rights holder is entitled to the disgorgement of the infringer’s total profit.

7.0 BENEFITS

An industrial design registration provides an exclusive right to exclude others from making, importing for the purpose of trade or business, selling, or otherwise offering for sale articles bearing the design. Specifically, where the registered design or a design not differing substantially therefrom has been applied to the article in respect of which the design was registered, the registration will provide the rights holder with the means to sue the manufacturers or importers of the knock-offs for infringement.

Industrial design protection is relatively quick to obtain, inexpensive, and powerful. It is easy for infringers to understand and can be enforced rapidly. Because industrial design protection covers appearance rather than function, it often complements (utility) patent protection given the range of designs that may be registered. Further, industrial design applications typically issue to registration within nine months of filing, compared with (utility) patent applications, which usually take three years or more to issue to patent from when examination is requested. Accordingly, an industrial design registration could be obtained and asserted while a (utility) patent application is pending. Thus, where the article has a unique function in addition to a unique appearance, rights holders should consider obtaining both (utility) patent and industrial design protection.

Industrial design protection can also serve as a gap-filler for trade dress protection that otherwise might not have been available for lack of distinctiveness. As an example of this strategy, a rights holder could first register the shape of its product as a design and subsequently, after it has become distinctive through use, the rights holder could also register it as a mark.

8.0 CONCLUSION

Industrial design protection in Canada is an important part of a strategy of North American intellectual property protection. The North American market is tightly integrated, with many Canadian manufacturers and exporters viewing the United States as their main market and US companies often having parts made in Canada. Obtaining a design registration in a country that is the source of supply of infringing articles enables rights holders to stop infringement at its source. The relatively low cost of litigation in Canada, the lack of jury trials, and the ability to recover costs justify the expense of obtaining Canadian industrial design protection.

In view of recent high-profile cases worldwide, similarities between the US and Canadian tests for infringement, and a tightly integrated market, it is expected that industrial design protection will continue to garner interest.