An
interesting decision was recently issued by Canada’s Federal Court, which has
sparked some interest in the intellectual property arena: Bodum USA, Inc. and PI Design AG v. Trudeau Corporation (1889) Inc. The case focuses on industrial design
infringement, a type of intellectual property that is rarely litigated in Canada.
What is an Industrial Design?
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.
What’s At Stake?
Bodum
owns industrial design registrations for glassware in the following shapes:
These
glasses were first made available in Canada towards the end of 2003 or
the beginning of 2004. The Canadian
Intellectual Property Office issued industrial design registrations for these
glasses on February 1, 2006. No
additional variations of the industrial designs were registered by Bodum.
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.
What are the Issues Before the Court?
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?
What was the Decision?
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.
How Did the Court Reach that Decision?
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.
What Does This All Mean?
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 in Canada. 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.
