Industrial designs are like the shy cousins of much sexier
patents and copyright. Sure, patents and copyright get all the
attention, but industrial design can be a very reliable, useful
tool in the intellectual property toolbox. This category of
protection (in the US, known as "design patents") will
protect the visual features of a product (shape, configuration,
pattern or ornament). Functional, utilitarian or useful elements
cannot be protected. Industrial design protection expires after 10
years, so it does not extend as long as patents or copyrights, but
can provide protection for articles that are not eligible for
either copyright or patent protection.
In Bodum USA, Inc. v. Trudeau
Corporation, 2012 FC 1128 (CanLII), the court
considered two competing double-walled drinking glasses, one of
which (the design owned by Bodum) was registered as an industrial
design. The double-wall configuration itself serves a utilitarian
function: it keeps hot drinks hot and cold drinks cold. Thus, the
double-walled feature could not be assessed in the infringement
analysis. As described in the judgement: "The court has to
decide only whether the alleged infringement has the same shape or
pattern, and must eliminate the question of the identity of
function, as another design may have parts fulfilling the same
functions without being an infringement. Similarly, in judging the
question of infringement the court will ignore similarities or even
identities between the registered design and the alleged
infringement which arise from functional matters included within
According to the Court, the competing product must be
characterized as "substantially the same" for there to be
infringement. This question must be analyzed by the Court from the
point of view of how the informed consumer would see things. In the
end, the Court decided that there was no infringement between
Bodum's design and the competing product.
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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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