An inventor had a "wow" moment when he came across a
design improvement for cold-weather visors – something
suitable for the snowmobile helmet market. The helmet maker brought
the improved helmet to market and also pursued both patent and
industrial design protection. The patent application was ultimately
abandoned, but the industrial design registration was issued
in 2010 for the "Helmet Face
Shield" design, which purports to protect the visor portion of
a snowmobile helmet.
AFX Licensing, the owner of the invention, sued
a competitor for infringement of the registered
industrial design. AFX sought an injunction and damages
for infringement under the Industrial Design Act.
The competitor – HJC America – countered with an
application to expunge the registration on the basis of invalidity.
HJC argued that the design was invalid due to a lack of
originality and due to functionality.
Can a snowmobile visor be protected using IP rights?
A registrable industrial design has to meet certain
criteria: (i) it must differ substantially from the prior art (in
other words it must be "original"); (ii) it cannot
closely resemble any other registered industrial designs; and (iii)
it cannot have been published more than a year before application
In AFX Licensing Corporation v. HJC America,
Inc., 2016 FC 435 (CanLII), the court
decided that AFX's industrial design registration was valid but
was not infringed by the HJC product because the court saw
"substantial differences" between the two designs. In
summarizing, the court noted the following:
"First, the protection offered by the industrial design
regime is different from that of the patent
regime... the patent regime protects functionality and
the design regime protects the aesthetic features of any given
product." (Emphasis added)
The industrial design registration obtained by AFX does
"not confer on AFX a monopoly over double-walled anti-fogging
face shields in Canada. Rather, it provides a measure of protection
for any shield that is substantially similar to that depicted in
the ID 964 illustrations, and it cannot be said that the HJ-17L
meets that threshold."
The infringement claim and the expungement counter-claim
were both dismissed.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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