Canada: Through A Glass Darkly: New Federal Court Of Canada Decision On Infringement And Validity Of Industrial Designs

The Federal Court of Canada recently released a decision on the infringement and validity of two designs registered under the Industrial Design Act. In Bodum USA Inc. et al v. Trudeau Corporation (1889) Inc., 2012 FC 1128 (Bodum), Boivin J. dismissed the plaintiffs' infringement action and allowed the defendant's counterclaim of invalidity, expunging the industrial designs from the register. Bodum provides new insights into the Canadian approaches to infringement and validity assessment, and a fresh opportunity to compare Canadian practices with those in other jurisdictions, such as the United States following the staggering jury verdict in Apple v. Samsung, No. CV-11-1846 (N.D. Cal 2012). 

The two industrial designs in question in Bodum consisted of the visual features of double-walled drinking glasses. Section 2 of the Industrial Design Act defines a "design" as being the "features of shape, configuration, pattern, ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye." Justice Boivin began his infringement analysis by reaffirming that industrial designs do not confer a monopoly over functional elements, and as such, the similarities in utilitarian function between two products are not to be considered by the court in an infringement analysis. Furthermore, Justice Boivin also stated that Bodum's registrations claim their respective designs in their entireties as opposed to in part. Therefore, to establish infringement in this case, "there must be something reasonably approaching identity."

With the aid of a single expert witness presented by the defendant, Justice Boivin undertook a detailed analysis of prior art designs and the respective shapes of the registered designs and the defendant's glasses.

The parties argued that different legal tests should apply when deciding the question of  infringement. As a starting point, the Act provides that infringement occurs when the registered design or "a design not differing substantially therefrom" is applied to an article without permission (s.11[1][a]). The plaintiffs advocated for applying a three-pronged test whereby the designs that are subject to the comparison are not viewed side by side but separately so that imperfect recollection can guide the visual perception of the finished article. However, Justice Boivin agreed with the defendant and held that the allegedly infringing product must be analyzed on a side-by-side basis from the point of view of how the informed/aware consumer would see things. Justice Boivin found support in Rothbury International Inc v. Canada (Minister of Industry), 2004 FC 578 (Rothbury). Interestingly, Rothbury concerned an appeal of a decision to refuse registration and clarified how the test for originality is to be applied. Infringement was never in issue. This illustrates how closely the tests for infringement and originality (validity) are aligned in Canada.

In considering whether differences are substantial, Section 11(2) of the Industrial Design Act states that the extent to which the registered design differs from any previously published design may be taken into account. In applying this test to the glasses at issue, Justice Boivin found that the defendant's glasses did not have the features attributed to them by the plaintiffs and were, in fact, more similar to the prior art glasses — including one of Bodum's own prior designs — than they were to the registered designs. Bodum's prior design, its registered designs and Trudeau's glasses are reproduced from Bodum below:

Furthermore, Justice Boivin also rejected the plaintiffs' argument that the translucent double wall of the defendant's glasses made them similar to the registered designs.  It appeared that Justice Boivin rejected the argument on the basis that these configurations were not particularly illustrated or described (see par. 61 and par. 89).

When conducting a validity analysis on the plaintiffs' designs, the court reiterated that to be registrable, an industrial design has to be substantially different from the relevant prior art and that a simple variation is not sufficient. The degree of originality required is higher than for copyright and involves at least a spark of inspiration in creating a new design or in hitting upon a new use for an old one. After comparing the prior art submitted into evidence and the Bodum registrations in question, Justice Boivin determined that, in each case, the respective Bodum design in question does not vary substantially: 

"...the evidence nevertheless demonstrates that the field of glassware, like the fields of shirt collars and shoes, is a field that has existed for a long time. They are articles used daily and, therefore, the differences must be marked and substantial."

In Bodum, Justice Boivin has affirmed that the originality requirement for obtaining an industrial design registration is relatively onerous, particularly for products in common use. The burden of proof for infringement has also been raised: an infringement analysis must be conducted from the point of view of an informed consumer rather than through that of an expert or by using the doctrine of "imperfect recollection" looking for confusion as advocated in earlier cases. Bodum teaches that an "informed eye of the court" approach may involve instruction of the court by experts to present prior art and to conduct analysis of the registered and accused designs in a side-by-side manner to determine whether the designs are substantially the same. (See also Algonquin Mercantile Corp. v. Dart Industries Canada Ltd., [1984] 1 CPR [3d] 75.) The reasoning of Justice Boivin raises fundamental questions about infringement and validity, and a number of the findings do not appear to be self-evident. For example, in a crowded field analysis, does it not make sense to acknowledge that a number of small distinguishing features taken together may function effectively as a substantial difference? A Notice of Appeal has already been filed by the plaintiffs, so perhaps the Federal Court of Appeal will take the opportunity to readjust the height of the bar.

The Bodum infringement analysis is quite similar to the approach taken in the United States. The U.S. test was first adopted by the Supreme Court in the 1871 decision of Gorham v. White, 81 U.S. 511 (Gorham), where the required comparison was to be undertaken by an "ordinary observer," not an expert, giving such attention as a purchaser usually gives. The patented design and accused design must be substantially the same. The comparison is done in light of the prior art, and a side-by-side comparison is undertaken.

In Gorham, the accused design and patented design had many differences, but the accused design was much more like the patented design than the prior art:

(Carani, C., Longwell, J., Industrial Designs Take Centre Stage: Apple v. Samsung, IPIC Webinar, Nov. 30, 2012.)

The U.S. test for validity may be contrasted to the Canadian test in part because U.S. design rights are patent rights, and U.S. law in this regard speaks of novelty and non-obviousness requirements. In practice, the results do not appear to be markedly different.  Both reviews under U.S. and Canadian law take into account the prior art and involve a comparison to determine whether a substantially different design exists. The U.S. test speaks of reviewing obviousness in relation to the new design from the point of view of a person skilled in the art. This notional person may be akin to a design expert and attributed with a keener or more knowledgeable eye than the ordinary observer employed for an infringement analysis. In Bodum, the informed consumer appears to be the notional person employed for both infringement and originality tests. 

In trial practice in the U.S., the analysis is ultimately conducted by members of the jury as instructed by the judge while in Canada, the judge alone is the trier of fact. 

In Apple, numerous design patents and accused products were under review by the jury.  Curiously, the jury refused to find infringement of Apple's tablet design where in a preliminary injunction ruling, Judge Koh opined that one of Samsung's accused tablets was "virtually indistinguishable" from the Apple design. The decision in Apple is not finally determined, and it will be interesting to see whether Apple can overturn the jury's verdict with respect to the tablet designs — and whether Samsung can overturn any of the many findings of infringement against its various communication devices and graphical user interfaces.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

17 Dec 2016, Other, Ontario, Canada

Podcast summary

In the inaugural episode of Diversonomics, co-hosts Roberto Aburto and Sarah Willis introduce listeners to the podcast and discuss their experiences with diversity and inclusion in the legal industry. They also outline some of the obstacles the profession faces with respect to adopting new strategies and overhauling old practices.

22 Dec 2016, Other, Toronto, Canada

Podcast summary

For episode two of Diversonomics, co-hosts Roberto Aberto and Sarah Willis interview Mark Greenburgh, a partner in Gowling WLG's London office. They discuss the exciting new diversity and inclusion opportunities that have arisen since the combination of Gowlings and Wragge Lawrence Graham, as well at Gowling WLG UK's LGBT OpenHouse initiative.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.