Double Diamond Distribution Ltd. v. Crocs Canada, Inc., 2024 FCA 204
In a case that highlights the power of protecting distinctive designs, Crocs Canada secured a win against Double Diamond Distribution Ltd. (“Double Diamond”), reinforcing the value of industrial design rights for businesses across Canada. The case involved Crocs Canada, Inc. and its parent company Crocs Inc. (collectively, “Crocs”), who brought a successful infringement action against Double Diamond in respect of Canadian Industrial Design No. 120939 (the “939 Design”), which protected the distinctive aesthetic features of its MAMMOTH line of clogs.
Background
The case was first brought before the Federal Court, where Crocs alleged that Double Diamond’s products unlawfully copied the distinctive aesthetic features of its 939 Design. The Court ruled in favor of Crocs, finding the design valid and confirming that Double Diamond’s products were infringing. The Court relied heavily on expert evidence to reject Double Diamond’s arguments, determining that minor variations in the design figures did not amount to separate designs and that the prior art cited by Double Diamond was substantially different. Furthermore, the Court found that the 939 Design’s features were not dictated solely by utilitarian function, affirming its registrability under Canadian law.
In its infringement analysis, the Court considered the perspective of an informed consumer and concluded that Double Diamond’s Fleece Dawgs footwear bore striking similarities to the 939 Design, describing them as “nigh identical.” The Court emphasized that the 939 Design was entitled to broad protection due to its distinctiveness and lack of similarity to the prior art. As a result, in two separate decisions, the Court ordered Double Diamond to account for profits earned from the infringing products and to pay costs in a lump sum, citing concerns about its litigation conduct.
Double Diamond appealed both decisions, arguing procedural errors, the design’s invalidity, and a lack of infringement. The company also sought to introduce new evidence to challenge Crocs’ credibility and the costs award. However, the Federal Court of Appeal (the “FCA”) dismissed the appeal, reaffirming the Federal Court’s findings.
The Decision
On appeal, the FCA dismissed all of Double Diamond’s claims. The FCA found no error in the Federal Court’s reliance on expert evidence to determine the validity of the 939 Design, or its conclusion that any differences in the figures were insubstantial variations and not impermissibly distinct designs. Arguments suggesting that the utilitarian function of the design outweighed its aesthetic features and that the Federal Court failed to acknowledge all prior art were dismissed.
The costs decision was also upheld, with the Court finding no fault in the Federal Court’s analysis and assessment of Double Diamond’s conduct. Double Diamond’s motion to introduce new evidence on appeal was rejected as untimely.
Commentary
The FCA decision affirms the value of industrial design rights for businesses operating in Canada. It highlights how robust design registrations can provide significant protection against competitors seeking to replicate distinctive product features. For businesses, design innovation is not only a market advantage but also a valuable intellectual property asset that can be protected and enforced through the industrial design framework in Canada. Companies should ensure that visually distinctive features of their product designs are properly protected and monitor the market for potential infringers.
For assistance in navigating industrial design rights or protecting your intellectual property in Canada, please contact Kristjan Spence at info@pckip.com.
PCK IP is a leading North American intellectual property firm based in Canada, specializing in the preparation, prosecution, and strategic management of patent and trademark portfolios for global markets. Our team of seasoned patent agents, engineers, scientists, and IP lawyers supports clients across diverse technologies, with expertise in coordinating cross-border IP strategies. Contact us today to explore how we can help secure and manage your intellectual property.
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