Industrial Designs: A Comparative Overview Between Canada and the United States

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.