Canada: Crowded Prior Art And Narrow Drawings Lead To Non-Infringement Of Industrial Design

Industrial design registrations (or "design patents" as they are referred to in some jurisdictions) are attractive for a number of reasons, including their low cost and often easy prosecution before examiners. However, as a recent decision of the Federal Court of Canada reminds us, where a design is situated in a crowded prior art field and the drawings for the design are narrow in scope, then the ability to enforce that design registration may be more limited.

AFX Licensing Corporation v HJC America, Inc

In AFX Licensing Corporation v HJC America, Inc, 2016 FC 435, Justice Diner held that the plaintiff's industrial design registration for a "Helmet Face Shield" ( Canadian Industrial Design Registration No. 133964) was valid, but not infringed.

Under Canada's Industrial Design Act, the owner of a registered industrial design retains exclusive rights over the design and any design that does not differ substantially from it.

Following the guidance provided in earlier industrial design registration decisions of the Federal Court, Justice Diner outlined the four steps required to determine infringement:

  1. an examination of the prior art: because a registered design may be infringed where the accused design "does not differ substantially from it", prior art must be considered in assessing the scope of "substantial difference";
  2. an assessment of utilitarian function and any methods or principles of manufacture or construction: while functional features of designs may be protected, only those features whose form are dictated solely by function are not protected. Similarly, design features that stem solely from methods and principles of manufacture and construction are excluded from design protection;
  3. an analysis of the scope of protection outlined in the language and figures of the registered design itself: based on a design registration's written description and/or clear indications in any associated illustrations, an analysis is required to determine whether the registration covers only a portion of an object or a whole object; and
  4. in light of all of the above, a comparative analysis of the registered design and the allegedly infringing product: taking into account the above, if the accused design does not differ substantially from the registered design, then there is infringement. The perspective for this analysis is that of an "informed consumer" (i.e., a person familiar with the market at issue).

The Court reviewed a number of prior art face shields, and determined what aspects of the registered design were "dictated solely by function". 

Regarding the prior art, the Court concluded that the design registration at issue in this case "entered a crowded field in which the notion of an outwardly moulded viewing area was already present in some forms and where the general contouring and shape of a helmet face shield was also well-defined. Thus, the degree of difference necessary for a newer design to evade the protection afforded ID 964 is small: 'If only small differences separate the registered design from what has gone before then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement.' "

Regarding functional aspects of the design, they included the shape insofar as it is contingent upon fitting with a helmet, a tab to raise the shield, hinges for the shield, and a viewing area that facilitates vision and sightlines of a user.

In addition, the Court considered the scope of protection based on the design registration itself. In this regard, the Court found that the registered design consisted of the entire face shield, and not just a specific element (i.e., "the outwardly moulded projection and the smooth contoured surface around the viewing area") as urged by the plaintiff. Notably, the Court stated that "[h]ad the Plaintiff wished to uniquely highlight that element of the shield for protection, that could have been done in a variety of ways, including through additional explanatory text, diagrammatic detailing (such as dotted lines, shading or highlighting), or a combination of both."

Ultimately, based on the above findings and the factual differences between the registered design and the accused design, the Court found that an informed consumer would conclude that there were significant substantial differences between the two designs. Regarding one of the features of the plaintiff's registered design (namely, double-walled anti-fogging), the Court specifically found that the patent regime, as opposed to the industrial designs regime, was the proper platform for seeking protection of such a functional feature. 

On the issue of validity, the registered design was held to be valid. In this regard, the prior art differed substantially from the design and features of the design alleged to be purely functional did not invalidate the registration, as there was at least some effort to appeal to the eye with respect to those features.

Lessons for industrial design prosecution

The plaintiff's experience in this case informs several practical tips that design applicants can use to increase the likelihood that they will receive the broadest design protection possible.

One option when filing a design is to show those portions of the article to which the design is applied but that are not actually part of the design in dashed lines. This has the effect of isolating and emphasizing what is original about the design, which can make it difficult for defendants to avoid infringing the related design registration by changing immaterial aspects of their products.

ID 964 shows the face shield entirely in solid lines. As noted above, Justice Diner accordingly refused to interpret this design as focusing only on the "outwardly moulded projection and a smooth contoured surface around the viewing area" notwithstanding the plaintiff's arguments, which it supported with expert testimony. If the plaintiff had shown everything but that moulded projection and contoured surface in dashed lines, Justice Diner could have properly focused only on those portions of the face mask, which would effectively have broadened the scope of the design registration.

However, broadening the design registration by showing portions of the article in dashed lines has the side effect of increasing the likelihood that the design registration will either not be granted for lacking originality, or that even if granted a court will find it invalid for the same reason. A design applicant can accordingly file multiple versions of its design, called "variants" in Canada, of different scope in the same application. For example, the applicant for ID 964 could have filed a single design application with one variant showing the face mask entirely in solid lines and a second variant showing only the "outwardly moulded projection and a smooth contoured surface around the viewing area" of the face mask in solid lines. While the Canadian IP Office would likely have eventually required a separate design application be filed in the event the applicant wanted both designs to register, the applicant could initially have elected to prosecute the broader design. If the Canadian IP Office rejected that broader design for lacking originality, the applicant could then have fallen back on the narrower design. Filing multiple variants in this way therefore allows an applicant to aggressively pursue broader protection while keeping a narrower design in reserve as insurance.

While the Canadian IP Office is quite strict in requiring that designs that differ only by their use of dashed lines be filed in separate applications, non-Canadian IP offices may be more relaxed in allowing multiple variants to issue together in the same registration. Without paying a filing fee for each design variant, in certain jurisdictions applicants may therefore be able to get protection for multiple variants in a single design registration.

Some jurisdictions, such as China, do not allow dashed lines to appear in a design application. Despite this, as a general rule the same set of figures used in Canada can be used as the basis of a design filing internationally, with national amendments being made such as to delete the dashed lines, as required.

While hindsight is 20/20, applying these techniques to ID 964 may have permitted ID 964's applicant to either feel comfortable pursuing a broader design from the outset or to get multiple registrations for variants of different scope, all of which could have been asserted in litigation.


While industrial designs may be attractive to those seeking registered IP protection for their design-related innovations, applicants should be mindful of the limitations of industrial design protection. In particular, applicants ought to be especially careful with which aspects of a design are claimed versus which are disclaimed (e.g., identified in broken lines), particularly where a design is situated in a crowded prior art field. Otherwise, the ability to enforce any resulting design registration may be more limited. Moreover, features of a product that are purely functional and have no aesthetic aspect can only be protected under the patent, and not the industrial design, regime.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
8 Nov 2016, Seminar, Ottawa, Canada

The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.

22 Nov 2016, Seminar, Ottawa, Canada

From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.

7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.