Crocs Canada, Inc. v. Double Diamond Distribution Ltd.

Crocs Canada, Inc. v. Double Diamond Distribution Ltd.

The registered 939 Design was valid and original, the alleged discrepancies in the figures amounted to insubstantial variants not multiple designs, the key features were not dictated solely by function, and viewed as a whole from the perspective of an informed consumer the Defendant's Fleece Dawgs products did not differ substantially from the 939 Design; accordingly Defendant infringed and Plaintiffs are entitled to an accounting of profits in the amount awarded.

Citation
2022 FC 1443
Parties
Plaintiff (defendant by Counterclaim): Crocs Canada, Inc.; Plaintiff (defendant by Counterclaim): Crocs Inc.; Defendant (plaintiff by Counterclaim): Double Diamond Distribution Ltd
Court
Federal Court
Jurisdiction
Canada
Judgment Date
21 October 2022
Procedural Posture
Intellectual Property – Industrial Design Infringement / Trial — Final Judgment (reasons Dated October 21, 2022)
Outcome
Plaintiffs' action allowed; Defendant's counterclaim dismissed
Legal Topics
Design Registration Validity, Infringement (not Differing Substantially), Originality, Functionality Exclusion, Accounting of Profits, Admissibility of Business Records/hearsay, Expert Evidence Objections, Delay / Laches / Tacit Inference, Costs
Source Language
English
Intellectual Property Industrial Design Civil Procedure Evidence Equity Design Registration Validity Infringement (not Differing Substantially) Originality +6 more

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Parties

Crocs Canada, Inc.

Plaintiff (defendant by Counterclaim)

Crocs Inc.

Plaintiff (defendant by Counterclaim)

Double Diamond Distribution Ltd

Defendant (plaintiff by Counterclaim)

Procedural Posture

Intellectual Property – Industrial Design Infringement / Trial — Final Judgment (reasons Dated October 21, 2022)

Legal Issues

  1. 1 Whether the 939 Design is invalid because it comprises more than one design/variants contrary to Industrial Design Regulations s.10
  2. 2 Whether the 939 Design is invalid for lack of originality given prior art
  3. 3 Whether any features of the 939 Design are dictated solely by utilitarian function (s.5.1)

Ratio Decidendi

The registered 939 Design was valid and original, the alleged discrepancies in the figures amounted to insubstantial variants not multiple designs, the key features were not dictated solely by function, and viewed as a whole from the perspective of an informed consumer the Defendant's Fleece Dawgs products did not differ substantially from the 939 Design; accordingly Defendant infringed and Plaintiffs are entitled to an accounting of profits in the amount awarded.

Court Disposition

Plaintiffs' action allowed; Defendant's counterclaim dismissed

Orders

  • Plaintiffs judgment for infringement of Canadian Industrial Design No. 120939 (939 Design)
  • Defendant's counterclaim for invalidity dismissed