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Industrial Design and Trademarks Go Hand in Hand

Published: 07 September 2023

Judicial decisions in matters of industrial design infringement are not common. The recent Federal Court decision in Crocs Canada Inc v Double Diamond Distribution Ltd, 2022 FC 1443, is worth noting.

A Protection Tool

In this case, Crocs, manufacturer of the famous molded shoe, was asserting its rights in a registered industrial design for its MAMMOTH shoes with fleece lining, against Double Diamond, which marketed shoes of the same style, also comprising a fleece lining.

The Court, relying in part on expert testimony, concluded, on one hand that Crocs' industrial design was original and not dictated solely by utilitarian functions and therefore valid, on the other hand, that Double Diamond was infringing Crocs' rights by marketing its similar products. The Court ordered Double Diamond to pay Crocs all the profits made on shoes sold in violation of Crocs' rights during the relevant period.

This decision is a reminder of the strength of the rights arising from registering an industrial design to deal with infringers.

An ornamental feature that allows a product to be recognized may possibly be protected through an industrial design registration, provided that the feature is original, i.e. that it does not bear a striking resemblance to another similar object of the same nature.

In addition to the style of a shoe, as in the Crocs case, an industrial design could also protect the shape of a bottle, or its cap, the shape of a kitchen accessory handle, the outline of a car hood, the shape of a computer screen, the style of an armchair or the knitting stitch of a sweater, for example.

Unfortunately, such a registration has limited longevity and cannot be renewed at the end of its term, which is 10 years from the date of registration or, if later, at the expiry of the 15-year period following the filing date of the application.

Extend Your Rights Through a Trademark Registration

Concurrently with the industrial design registration, it may be possible to obtain a three-dimensional trademark registration protecting the distinctive ornamental features of the goods that are the object of the industrial design registration, to the extent that it can be shown that they have become distinctive. In order to avoid a gap in the period of protection of these features, it is preferable to obtain the registration of the mark before the expiry of the industrial design. Therefore, anyone who has held an industrial design registration for more than five years and whose design has been commercially successful should therefore consider extending the protection of his rights through a trademark registration.

If the ornamental characteristics of the product have remained distinctive, obtaining a trademark registration is a very attractive option, especially if it can be demonstrated that the products have been sold for many years in Canada. Indeed, this allows for greater longevity of intellectual property rights since the trademark registration can be renewed, every ten years, as long as the trademark is used.

Do You Have More Questions? We Have Answers.

Contact our team of intellectual property professionals. Our team has extensive expertise in industrial designs and trademarks and will be pleased to guide you in your strategy to protect your intellectual property assets in Canada and internationally.

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As the partner in charge of BCF’s Trademark group, Johanne Auger supports businesses of all sizes in developing and supervising national and international trademark portfolios. Her global vision of issues, her excellent listening skills and her personalized approach help her develop protection strategies tailored to the realities and needs of each client, whether in Quebec, Canada or worldwide. With more than 25 years of experience in trademark protection, intellectual property management and litigation, Johanne advises start-ups, SMEs and large companies operating in the technology, agri-food, pharmaceutical, tourism, cultural, finance, manufacturing, textiles and retail industries. She also leads BCF's Internet group, which offers businesses strategic legal advice regarding their online presence. An excellent communicator eager to share her knowledge, Johanne regularly gives trademark lectures to various organizations in Europe, Asia and North and South America. She provides customized training to senior management and marketing teams from several companies. She has also been the Director of the intellectual property courses offered by McGill University and the Intellectual Property Institute of Canada and has served on the Institute’s board of directors. Concerned with better representation of women in the workplace, she co-directs BCF’s Parity and Inclusion Committee. Johanne Auger will be attending the UNIFAB conference in Paris, FR, March 21st to March 22nd, 2024.  Johanne Auger will be attending the International Trademark Association Annual Meeting in Atlanta, GA, May 18th to May 22nd, 2024. 

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