As mentioned in our previous post, industrial
designs protect the visual features of a product (shape,
configuration, pattern or ornament). Functional, utilitarian or
useful elements are not eligible for protection. This was
illustrated in Bodum USA, Inc. v. Trudeau Corporation, 2012 FC
1128 (CanLII), where the court found that Bodum's double-walled
drinking glass design was not infringed, since the competing
product was not substantially similar in light of the many
variations of double-walled glasses in the marketplace. The designs
would have had to be virtually identical to support a finding of
A second interesting element to this case is the counterclaim by
Trudeau Corp., who sued for a declaration that the Bodum design was
invalid due to the prior art on the register. The court in
Bodum confirmed that to be registrable, an industrial
design must be substantially different from prior art. A simple
variation is not enough. For a design to be considered
original, there must be some "substantial
difference" between the new design and what came before.
"A slight change of outline or configuration, or an
unsubstantial variation is not sufficient to enable the author to
obtain registration." In this case, the Court reviewed a
number of other existing designs for double-walled glasses - one of
which was designed in 1897 - and decided that Bodum's design
was not original. To come to this conclusion, the Court set aside
the utilitarian functions, the materials used, and colours applied,
and looked merely at the visual or ornamental features.
In the end, Bodum's design did not satisfy the requirement
of "substantial originality", and the registration was
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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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