Bodum finds its glass half empty after rare Federal Court industrial design decision

The Federal Court has issued its decision in Bodum USA Inc v Trudeau Corporation (1889) Inc (2012 FC 1128 September 26, 2012), which related to Industrial Design Registration Nos 107,736 and 114,070. In the decision, the Federal Court:

• rejected Bodum’s claim of industrial design infringement against Trudeau on the basis that, with respect to the shaping of the interior line of the glasses, the Trudeau glasses had almost none of the features of the configuration of Bodum’s Industrial Design Registration Nos 107,736 and 114,070; and 
• found the industrial design registrations in question invalid on the grounds that the double-walled drinking glasses depicted in these registrations were not substantially different from those found in the prior art.

Industrial designs protect the visual features of an article and do not afford any protection to the function of the article. An industrial design can be registered if it does not closely resemble any other pre-existing designs. In order for there to be infringement of an industrial design, the infringing article must be substantially the same as the registered design.

Bodum’s Industrial Design Registration Nos 107,736 and 114,070 relate to the configuration of double-walled drinking glasses. The relevant figures of these registrations are reproduced below:

Trudeau began selling two types of double-walled drinking glasses in 2006. Bodum alleged that these glasses infringed their industrial design registrations. The Trudeau glasses are depicted below:

The Federal Court considered the following issues:

1. Did Trudeau infringe Bodum’s industrial design registrations?
2. Are Bodum’s industrial design registrations valid?

Trudeau relied on an expert witness (Michel Morand) who concluded as follows:

1. The differences between Bodum’s industrial design registrations and the prior art glasses were minimal;
2. There was no “spark of inspiration” in the shape of the glasses depicted in Bodum’s industrial design registrations; and
3. The interior and exterior lines of the Trudeau glasses were different from the interior and exterior lines of the glasses depicted in Bodum’s industrial design registrations.

The Federal Court was careful in noting the distinction between the visual characteristics and the functional characteristics of the double-walled glasses depicted in Bodum’s industrial design registrations. The Federal Court recognised that they have a functional element, in that the space between the interior and exterior walls helps to “keep hot drinks hot and cold drinks cold”. Although this functionality exists, the Federal Court reaffirmed that industrial design registrations protect the visual features of an article but not the function of an article. As such, the industrial design registrations in question do not give Bodum a monopoly over double-walled glasses in Canada.

The Federal Court found that the main difference between Trudeau’s double-walled glasses and the glasses depicted in Bodum’s industrial design registrations lay in the shaping of the interior line of the glass. The interior line of Trudeau’s glasses went from convex to concave, whereas the interior line of the glasses depicted in Bodum’s industrial design registrations was convex.

The Federal Court decided that the Trudeau glasses had almost none of the features of the configuration of the industrial design registrations in question and thus these registrations were not infringed.

The Federal Court then considered Bodum’s industrial design registrations in light of the prior art. The Federal Court noted that industrial design registrations enjoy a prima facie presumption of validity as set out in Section 7(3) of the Industrial Design Act and that this presumption is not irrebuttable.

By comparing prior art double-walled glasses submitted into evidence with the industrial design registrations in question, with specific focus on the interior and exterior lines, the Federal Court found that the registrations did not vary substantially from the prior art. The Federal Court agreed with Trudeau’s expert witness who stated that “glasses have indeed existed for thousands of years and all shapes have already, for the most part, been explored in the same way as shown by other prior art”.

For these reasons, the Federal Court decided that the industrial design registrations in question did not satisfy the requirement of originality and thus were not valid. Bodum filed a Notice of Appeal to the Federal Court of Appeal on October 25 2012, under Court File No A-450-12.

This decision reminds applicants that industrial design registrations:

1. only provide protection for the features of shape and configuration, among other things, of an article that appeal to, and are judged solely by, the eye;
2. do not provide protection for the function of an article; and
3. must be substantially different from pre-existing designs.

Since industrial design registrations only provide protection for the visual features of an article, it is recommended that applicants consider applying for various forms of intellectual property protection in combination, if applicable, to ensure that all aspects of their intellectual property are sufficiently protected.

Kelly J Stewart, SIM. IP Practice, Toronto