Hen’s tooth found: Federal Court decides industrial design infringement case

November 2012 Authors: André Thériault, Christopher N. Hunter

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The Federal Court heard its first industrial design case in nearly two decades. On October 22, 2012, the Federal Court released reasons for judgment1 in an action initiated collectively by Bodum USA, Inc and PI Designs AG (collectively, Bodum) with respect to alleged infringement by Trudeau Corporation (1889) Inc. (Trudeau) of two registered Canadian industrial designs (registration numbers 107,736 and 114,070). Both of the designs claimed the visual features of double wall drinking glasses. The Court ruled that Trudeau’s double wall drinking glasses did not infringe either of Bodum’s designs and that both design registrations were invalid for not meeting the originality requirement. Bodum has filed a notice to appeal the Federal Court’s decision.

In Canada, industrial designs protect original features of articles that appeal to the eye. They do not protect functional characteristics or methods or principles of construction. Here, the Court ignored the utilitarian function of double wall drinking glasses during its analysis because the space between the inner wall and the outer wall of a double wall glass has a utilitarian function of keeping hot drinks hot and cold drinks cold. Instead, the Court compared interior and exterior lines (i.e., profiles) of Trudeau’s double wall glasses with those of the designs and determined that the lines of Trudeau’s glasses had different curvatures and proportions than those of the designs. Consequently, the Court concluded that Trudeau’s double wall glasses were not infringing products. Drawings from the industrial designs at issue together with images of Trudeau’s double wall glasses are included below for reference.

With respect to the requirement for originality, the Court adopted notions from prior jurisprudence that an industrial design must be substantially different from the prior art and must involve "at least a spark of inspiration on the part of the designer." Again, by focussing on the lines of Bodum’s two designs and comparing them to those of prior art glassware, the Court found that the designs did not vary substantially from the prior art and ruled that Bodum’s two designs be expunged from the register for not meeting the requirement of originality.

There is relatively little jurisprudence in the area of industrial designs in Canada. However, it is understood that Canadian industrial designs can provide meaningful yet relatively inexpensive protection for up to 10 years for visual features of finished articles. Industrial designs may be appropriate for a variety of articles such as consumer products, vehicles, sports equipment, packaging, etc., having an original aesthetic appearance, and may even be used to protect new technologies such as electronic icons. Industrial designs can also serve to complement other forms of intellectual property rights such as patents and trade-marks.

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Footnotes

1 Bodum USA, Inc. and PI Design AG v. Trudeau Corporation (1889) Inc., 2012 FC 1128. (Link to decision)

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