Hello, everyone. I was going through some of the previous posts on the website and was intrigued by the MSCHF in Law post. It led me down a footwear spiral and I also came across this case where the Federal Court of Canada in Crocs Canada, Inc. and Crocs Inc. v. Double Diamond Distribution Ltd. issued a rare decision concerning industrial design infringement and reaffirmed several points of law favouring holders of industrial design registrations in Canada seeking to enforce their rights[1].
The case in question involved a dispute over the distribution of Crocs’ Industrial Design Registration No. 120,939 (939 Design) for its MAMMOTH line of clogs[2] which is provided below alongside a picture of the clog:
Double Diamond (a Saskatchewan corporation) has sold “Fleece Dawgs” (shown below) in Canada since 2008.
Crocs filed a suit against Double Diamond stating infringement of the 939 Design in November 2017. Double Diamond denied the Fleece Dawgs were unlawful imitations and infringing copies of the design[3]. Further, they counterclaimed for invalidity and sought costs whilst also alleging the actions brought by Crocs were vexatious, abusive and frivolous. The major issues determined by the Court in the case were:
- Whether the 939 Design was invalid because (a) it comprises more than one design contrary to section 10 of the ID Regulations, or (b) it is not original having regard to the prior art?
- If the design was valid, had Double Diamond infringed the same, entitling Crocs to Double Diamond’s gross sales of its Fleece Dawgs products?
In order to support their claim that the 939 design was invalid, Double Diamond claimed that there were discrepancies and inconsistencies in the figures, such as the placement of the fleece collar in Figure 1 in comparison to Figure 4 of the 939 Design (illustrated below), where the highlighted area in Figure 4 is partially obscured by the fleece but is not in Figure 1. As per Double Diamond, Figure 1 and Figure 4 represent separate designs contrary to S.10 of the Industrial Design Regulations[4]. Expert evidence from Crocs was provided by Ian Whatley (bioengineer and footwear expert) whereby he elaborated on how due to parallax (the concept that one’s viewing position or angle can change the appearance of an object’s shape can factor into the different appearances and that the fleece collar being differently positioned was an insubstantial variation.
The Court concurred with Mr. Whatley that Figure 4 was simply an insubstantial variation where a portion of the fleece collar is displaced but is not a separate design. The Court also emphasised that the four-part infringement analysis must be done from the perspective of an informed customer deemed familiar with the particular market and prior art rather than the consumer with an imperfect recollection. Upon reading through the judgement, I found that the Court had decidedly not defined what was meant by “an imperfect recollection.”
In their arguments pertaining to the remedies, Double Diamond alleged that due to Crocs’ delayed initiation of a suit (approx. 9 years after Fleece Dawgs were launched) Crocs were not entitled to a finding of infringement and any remedies, including an accounting of profits which is a remedy provided by the Industrial Design Act. The Court found that Double Diamond’s delay in raising the issue of delayed initiation of suit disentitled them to the inference they had belatedly sought.[5]
The Federal Court of Canada found that Double Diamond’s Fleece Dawgs infringed upon Croc’s 939 Design and further required Double Diamond to yield to Crocs their gross sales of its Fleece Dawgs products over the period in question.
This case was extremely interesting to read as it allowed me to appreciate the nuances in industrial design registration in Canada and the standards of review that govern their assessment.
[1] “Crocs Canada v. Double Diamond: Strength of industrial design rights and remedies in Canada reaffirmed by Federal Court,” Matthew Burt, Lionel Fishman, Smart & Biggar, December 15, 2022, https://www.smartbiggar.ca/insights/publication/crocs-v-double-diamond-distribution-strength-of-industrial-design-rights-and-remedies-in-canada-reaffirmed-by-federal-court
[2] Ibid
[3] Crocs Canada, Inc and Crocs Inc. v. Double Diamond Distribution Ltd., 2022 FC 1443, at para 13 https://www.canlii.org/en/ca/fct/doc/2022/2022fc1443/2022fc1443.html
[4] Ibid
[5] Ibid
Communications Law