Canada: Industrial Designs And Publication

Last Updated: November 29 2013
Article by John McKeown

A recent English case emphasizes the importance of filing industrial design applications in a timely fashion.

The Facts

The Plaintiff's Design

Magmatic Limited manufactures and sells a child's ride-on suitcase under the trade mark TRUNKI. Robert Law, the founder and a director of Magmatic had the idea of taking established technology for adult suitcases and designing a product for children that would maximise space, yet be fun and ergonomic to use. He developed this idea into a design which he called "Rodeo". He made a mock-up of his design in polystyrene and a prototype in vacuum-formed plastic. He also produced a concept board with visualisations showing the product in use. The concept board clearly shows what the product was intended to look like and how it was intended to be used.

In 1997 Law was studying product design at a university. He entered the competition for the BASF/Institute of Materials Design Award 1998 which is an annual student plastic design competition. The theme for the 1998 competition was "a design for luggage".

Mr. Law won the Award. The presentation of the award was a public ceremony and the persons who attended the ceremony would have seen the Rodeo design product as shown in the concept board, and could have taken that information away in their heads. As a result the Rodeo design was made available to the public.

Between 1997 and 2002 Law continued to develop the design. The bulk of the work took place in 2001. By June 2002 Law had arrived at a design which he considered was sufficiently finished to show to a manufacturer. Accordingly, on 26 June 2002 he applied for a UK Registered Design, which was registered on 23 July 2002 and lapsed due to non-renewal on 26 June 2012. An additional community registered design was filed on 20 June 2003 and published on 28 October 2003. Law showed this design to a manufacturer in confidence, but the manufacturer was not interested.

In 2006 Law appeared on the television programme Dragons' Den, which led to Magmatic securing an agreement to supply the product which was then known as TRUNKI. Law continued to develop the design of the TRUNKI. A "Mark II" design was created between May and December 2006. Products made to this design were first sold in June 2007. A "Mark IIA" design was created in 2008 and first sold in early 2009. A "Mark III" design was created between March and December 2009, and first sold in April 2010.

It is clear that the TRUNKI was an innovative design. Apart from the Rodeo, it does not appear that anything like it had been produced before. The product has won numerous awards and has been a significant commercial success. Magmatic calculates that in 2011 approximately 20% of all 3-6 year olds in the UK possessed a TRUNKI. Although the majority of Magmatic's sales are in the UK, it currently sells the TRUNKI in 97 countries.

The Defendant's Activities

Towards the end of 2010, a representative of the defendant noticed the TRUNKI when travelling. He considered that it was a good product, and discovered that it had been successful. He also discovered that a discount version did not appear to be available, and concluded that there was a gap in the market which the defendant could exploit. The defendant purchased a Mark III TRUNKI and decided to produce a similar product. As a result the defendant began shipping its Kiddee case in December 2012.

The Action

When Magmatic became aware of the defendant's activities it immediately complained and subsequently brought proceedings for, among other things, the infringement of its community registered design. The defendant defended this claim on the grounds that, if the scope of protection of the community registered design was broad enough to encompass the Kiddee Case, the registration was invalid over the earlier Rodeo design.

Publication

Under the Canadian Industrial Design Act the registration of a design will be refused if the application for registration is filed in Canada more than one year after the publication of the design in Canada or elsewhere. Publication anywhere in the world must be considered. Publication more than a year before the filing date can also result in the registration of a design being found to be invalid or expunged.

Publication means offering or making an article available to the public. In this context the definition includes those who are in fact, or are considered by the design owner as apt to be, interested in purchasing the article to which the design is applied or taking advantage of its availability. Disclosure of the design, for the purpose of obtaining orders for an article to be made according to the design, is a publication of the design. Publication must generally be of a commercial nature. Publication to service providers by the design owner to develop a commercial version of the design does not constitute publication. All disclosures for the purpose of soliciting orders typically constitute publication.

With some exceptions, which are not relevant to the present discussion, the law is the same for community designs.

The Decision

The judge concluded that the rodeo design had been published in 1998 at the BASF/Institute of Materials Design ceremony. However, he also found that the Rodeo design produced a different overall impression on the informed user then the design of the registered community design or the Kiddee Case design so that the community registered design was not invalid by virtue of publication of its Rodeo design.

The judge then found that the Kiddee Case produced the same overall impression on the informed user as the registered community design and the defendant was liable for infringement of the registered community design.

Comment

A key requirement for an industrial design is to control "publication" and ensure that an application is filed within one year of publication. Failure to comply can be costly.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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John McKeown
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