An Industrial Design Registration For A Helmet Face Shield Is Found To Be Valid, But Not Infringed (Intellectual Property Weekly Abstracts - Week of May 9, 2016)

INDUSTRIAL DESIGN DECISIONS

An industrial design registration for a helmet face shield is found to be valid, but not infringed

AFX Licensing Corporation v. HJC America, Inc., 2016 FC 435

The Federal Court has found that while the Plaintiff AFX's industrial design is valid, the Defendants have not infringed it.

AFX's industrial design is for a "Helmet Face Shield", which purports to protect the visor, or face shield, portion of a snowmobile helmet. The Court sought to answer whether the industrial design was valid, infringed, and whether AFX has violated subsection 7(d) of the Trademarks Act in misrepresenting the design as valid.

Although AFX asked the Court to only consider the "outwardly moulded projection" of the face shield and not the whole, the Court held that the registration protects the entire design. This was because AFX did not restrict coverage of the registration to only a portion of the design. Upon review of the prior art, the Court found that the shield 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 is small.

It was also stated that face shield design is contingent on helmet design, and on its own, it has little to no use. This was found to diminish the designer's scope to introduce 'sparks of originality' into the product's design.

In sum, the Court held that an informed consumer would conclude that there are significant substantial differences between the two face shields, and thus no infringement was found.

When asked to assess the validity of the registration, the Court turned to the prior art and found that the registration met the degree of originality necessary to uphold its registration. The design was also held to not be purely utilitarian, contrary to the Industrial Design Act. On finding the registration to be valid, the Court held that the allegation of holding out the industrial design to be valid contrary to subsection 7(d) of the Trade-marks Act, moot.

SUPREME COURT LEAVE DECISIONS

Leave to appeal dismissed for the expungement of the SPEED QUEEN mark

Whirlpool Canada LP v. Alliance Laundry Systems LLC (SCC #36782)

The Supreme Court has dismissed Whirlpool's leave to appeal from 2015 FCA 232, a 2-1 decision delivered from the bench of the Federal Court of Appeal.

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