Registered Industrial Designs: If the shoe fits…


In the world of intellectual property, much is made of patent law (protects inventions), copyright (protects the expression of ideas), and trademarks (protects identifiers of the origin of goods and services).

All of these rights are the subject of federal legislation in Canada. Far less notice is given to the rights offered under the federal Industrial Design Act (the "Act"), a statute intended to protect the appearance of goods. A recent decision of Canada’s Federal Court serves as a reminder of those rights.

Under the act, a “design” or “industrial design” is defined 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.” Further, a single registration may cover “variants,” defined as “designs applied to the same article or set and not differing substantially from one another.”

In the case before the court, the judge was tasked with determining whether the plaintiffs’ shoe design, which was the subject of an industrial design registered under the Act, was validly registered and, if so, whether a shoe sold by the defendant infringed the plaintiffs’ exclusive rights in the design.

In support of their registration, the plaintiffs had filed drawings showing their shoe design from various perspectives front and back, top and bottom, inner and outer — as required. The defendant alleged that the plaintiffs’ design was not unique or original and that the plaintiffs’ drawings seemed to protect more than one design in a single registration, which, if proven, would invalidate the registration.

The judge found that neither of these defences fits, holding that the plaintiffs’ design registration was valid, that its design features were not dictated solely by function, and that the defendant infringed the design. The judge decided that only one design (albeit with variants) was registered by the plaintiffs, as permitted under the Act, and that the plaintiffs’ design involved at least “a spark of originality,” as required under caselaw interpreting the Act. 

As a result, the judge found that the plaintiffs were entitled to an accounting of the defendant’s profits on the sales of its infringing shoes, which the plaintiffs elected to receive instead of damages.

This case is a reminder to those that create new designs that they should consider protecting them with registrations to prevent copying by others. At the same time, manufacturers and importers should bear in mind that they must ensure that they do not copy the appearance of competitors’ goods without checking to see if those goods’ appearance is protected by registered designs before selling them. Put another way, they ought not to wait until the other shoe drops and they get sued