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
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.
1 Bodum USA, Inc. and PI Design AG v. Trudeau Corporation
(1889) Inc., 2012 FC 1128. (Link to decision)
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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