In Crocs Canada Inc. v. Holey Soles Holdings Ltd. the Defendants, Holey Soles, sought summary judgment dismissing Crocs Canada’s claim of copyright infringement and passing-off under the Trade-marks Act. At issue was plastic footwear sold by Crocs Canada. The footwear features distinctive holes placed in the upper portion, as well as side venting.

Prior to 2004, Holey Soles and other companies had been allowed to sell Crocs Canada’s shoes under their own brand names. When that arrangement ended, Holey Soles began selling shoes similar in style, but manufactured for Holey Soles in China.

In seeking a summary judgment, Holey Soles argued that Crocs Canada’s claim disclosed no triable issue because the doctrine of functionality precluded the assertion of any trademark right. Both parties relied on the 2005 “Lego case” (Kirkbi AG et al. v. Ritvik Holdings Inc.) in which the Supreme Court of Canada concluded that the shape of the building blocks was purely functional and not a distinguishing guise.

Here, the Court noted that the circles and semicircles on the shoes did have a functional role namely, to allow air and water in and out of the shoes.

However, the Court also noted that the decision in Lego did not rule out the possibility of trademark protection for a design that was only partly functional. Given this, the Court here concluded the summary judgment application could not succeed. The question whether the design and pattern of the circles and semicircles on Crocs Canada’s shoes was sufficiently functional so as to support distinguishing guise claims, was a question of fact that required a trial.