By Michael House
Canadian Federal Court Releases Industrial Design Infringement and Validity Decision
The Canadian Federal Court recently released a rare industrial design decision that clarified the standards and analytic approaches to be used for deciding claims of infringement and invalidity under the Industrial Design Act, RSC 1985, c I-9. The case, Bodum USA Inc and PI Design AG v. Trudeau Corporation Inc., 2012 FC 1128, involved Bodum claiming that Trudeau infringed two designs of double wall glasses. A double wall glass has an exterior glass lining that is separated from the interior glass lining by having air between the interior and exterior linings. According to Bodum’s promotional materials, this keeps hot drinks hot and cold drinks cold longer than a traditional glass. The double wall also makes it so that condensation doesn’t accumulate on the exterior of the glass. Although the functionality of the glasses was discussed by the Court, the Court took this opportunity to reiterate that industrial designs “protect visual features but not utilitarian function.” As such, the functionality of the glasses was not relevant for the purposes of the infringement analysis.
The Court proceeded on its analysis of the infringement by conducting a side-by-side comparison of the articles in question. This analysis was led by the expert witness called by the counsel for Trudeau. The Court decided that a close examination of the convex/concave nature of the interior and exterior lines of the glasses showed that the glasses were not “substantially similar.” As this is the standard set out in section 11 of the Act, Bodum was not successful in its claims for infringement.
Bodum tried to argue that the analytic approach for infringement of industrial designs should be conducted in accordance with the three-pronged test set out in Valor Heating Co. v Main Gas Appliances Ltd.,  FSR 497. This would involve the designs being compared separately, not side-by-side. Without ruling on the issue, Boivin J said that this test may not be relevant in light of amendments made to section 11 of the Act in 1993. As such, the analytic approach that will be used going forward will be a side-by-side analysis of the articles in question.
Trudeau turned the tables on Bodum by counterclaiming that the industrial designs held by Bodum were invalid in light of prior art that existed prior to the 2004 priority date of the designs. Although registering a design with the Office of the Commissioner of Patents of the Canadian Intellectual Property Office results in a presumption of validity, this presumption can be rebutted if the claimant shows that the design is not “substantially different” from prior art. Counsel for Trudeau pointed to designs that existed as early as 1897 that used the double wall design. The Court was persuaded that the Bodum designs were not substantially different from the prior art. As such, Bodum’s industrial designs were deemed invalid.
So, what can we take away from this decision? First, the analysis for an industrial design infringement claim should be conducted by a side-by-side comparison of the articles with an eye to “substantial” similarity. If the articles are not “substantially similar,” the claim will fail. Second, in order to invalidate an industrial design, the claimant must show that the design is not “substantially different” from prior art. Third, if you are going to trial for claims based on industrial designs, it is probably worth it to call an expert witness who agrees with your analysis of the articles (Bodum did not call an expert witness).
Of course, this is a trial decision and may not be the last word on these issues – Bodum may appeal the decision. It would be interesting to see how the Court of Appeal reacts to the analytical approach taken in determining the invalidity of Bodum’s industrial designs. In particular, it would be interesting to see if the Court of Appeal agrees with Boivin J that the standard of proof to rebut the presumption of validity of Bodum’s designs had been met by Trudeau.