The case focuses on industrial design infringement, a type of intellectual property that is rarely litigated in Canada.
Before delving into the case, let’s get back to basics. Industrial design is not as commonly known (or understood) as its intellectual property counterparts: patents, trade-marks or copyright. Industrial designs seek to protect ornamentation on functional articles, specifically:
“features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye”
On the face of it, you would think that this type of protection would be extremely useful for consumer products and fashion designs and accessories. Unfortunately, this case simply reiterates that industrial design protection is a more fickle type of protection in Canada. An examination of this decision will illustrate why.
Who Are the Players?
The Bodum brand was established in Denmark in 1944 and is well known for its kitchen products. PI Design AG owns several industrial design registrations in Canada for the shaping of glasses. PI Design AG licenses these industrial designs to Bodum USA Inc., who distributes the Bodum products in the US,Canada, Mexico and South America.
Trudeau Corporation (1889) Inc. is a Quebec-based company that was founded in 1889. It designs, imports, develops and markets kitchen products in Canada and internationally.
Bodum owns industrial design registrations for glassware in the following shapes:
Trudeau introduced its glasses to the Canadian market in the latter half of 2006:
Bodum did not take too kindly to the competing products and promptly commenced an action claiming industrial design infringement and unfair competition, which is contrary to the Trade-marks Act. Unsurprisingly, Trudeau denied Bodum’s allegations. Trudeau kicked it up a notch by seeking to invalidate Bodum’s industrial design registrations.
The Federal Court was tasked with considering the following issues:
a) Did Trudeau infringe Bodum’s industrial designs?
b) Are Bodum’s industrial design registrations invalid?
c) Does Trudeau’s marketing constitute unfair competition via an offence of confusion?
If you’re looking for a quick answer, here it is: Bodum lost out – there was no infringement or confusion. Trudeau reigned supreme – Bodum’s industrial design registrations were held to be invalid.
It is important to understand some fundamental tenets of industrial design law in Canada:
- Industrial designs protect visual features of an article.
- Industrial designs do not protect functionality.
- An industrial design can be registered if it satisfies the above criteria and does not closely resemble any other registered industrial design.
- In order for there to be infringement, the articles must be substantially the same.
Trudeau called into action the only expert witness. The expert had a degree in industrial design and was an industrial design consultant. The expert came to the following conclusions:
- Bodum’s glass shapes were not particularly unique. There were minimal differences between Bodum’s glasses and others in the marketplace.
- He did concede that the interior and exterior lines of the respective parties’ products were different.
The court recognized that there was a functional aspect to the double wall configuration of the glasses: the space between the walls helped to keep hot drinks warm and cold drinks cool. Thus, Bodum was not granted a monopoly over all double wall glasses in Canada, but rather the look of the double wall glasses as identified in the industrial design registrations.
The major difference between Bodum and Trudeau’s glasses lay in the shaping of the interior line of the glass: Bodum’s glasses were convex whereas Trudeau’s glasses were at first convex and then became concave. Both parties’ exterior line are convex. Ultimately the court decided that the Trudeau glasses had “almost none of the features of the configuration of industrial designs in question”.
The court recognizes that industrial design registrations enjoy a prima facie presumption of validity – but this is a rebuttable presumption. The court considered Bodum’s industrial design registrations in light of the prior art and held that they were not substantially different. As such, the industrial designs did not meet the criteria for registration and, as such, the registrations will be expunged.
Let’s keep in mind that this may not be the end of it. This decision was at the trial level. Bodum may appeal this decision. We have yet to see. CanadaFashionLaw will keep you posted.
This decision confirms that relying on industrial designs as the only type of intellectual property protection is risky. It is best to try to augment industrial design protection with other types of intellectual property protection. Generally, industrial designs are known to be a a very narrow form of protection inCanada. However, in Canada we have seen intellectul property laws evolve with industry's demands. For example, Metro-Goldwyn Meyer successfully struggled for Canada to recognize sound marks. Perhaps Canada needs a strong industry player to push the envelope through Canada’s judiciary to turn industrial design protection from a sleeping giant to an effective tool for businesses to protect their creative ingenuity.
Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website www.canadafashionlaw.com. Follow her on twitter @brandfashionlaw.