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

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

Events from this Firm
26 Sep 2019, Seminar, London, UK

Providing GCs, Heads of Legal and senior in-house lawyers with timely, topical and practical legal advice on a variety of topics.

8 Oct 2019, Seminar, Birmingham, UK

Supporting the development of paralegals, trainees and lawyers of up to five years' PQE by providing valuable knowledge and guidance together with practical tips.

10 Oct 2019, Seminar, London, UK

Supporting the development of paralegals, trainees and lawyers of up to five years' PQE by providing valuable knowledge and guidance together with practical tips.

Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions