Bodum – a maker of popular coffee-press and glass products
– wanted to protect their design for a double-walled drinking
glass in a competitive marketplace. Apple wanted to protect the
design of their popular handsets like the iPhone and iPad. Both
companies turned to industrial design protection.
Industrial designs are like the shy cousins of patents and
copyright. Patents and copyright get all the headlines, but
industrial design can be a very reliable, useful tool in the
intellectual property (IP) toolbox. Industrial designs (in the US,
known as "design patents") will protect the visual
features of a product (shape, configuration, pattern or ornament).
It's important to remember that 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.
Two recent cases illustrate the importance of this type of IP:
In Bodum USA, Inc. v. Trudeau Corporation, Bodum sued
Trudeau for infringement of its double-walled drinking glass
design, (which was registered as an industrial design). In
comparing the two designs the Court discarded utilitarian function.
Since the double-walled feature keeps hot drinks hot and cold
drinks cold, it 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 the design."
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.
Regarding registrability, 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. In this case, the Court reviewed a number of other
existing designs for double-walled glasses (some dating back to
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. Bodum's design did not satisfy
the requirement of "substantial originality", and the
registration was expunged by the Court.
In the famous case of Apple vs. Samsung, Apple used 7
industrial design registrations to attack Samsung's Galaxy-line
of smartphones and tablets. These design patent registrations
protected the features of the iPhone and iPad, and one design
registration even protected the user interface of the iPhone. In
the end, Apple's design registrations were upheld and Samsung
was found to have infringed a number of the iPhone and iPad design
patents, including the D'305 design for the graphical
interface, shown above.
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.
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