CANADA
THIS CASE HIGHLIGHTS THE IMPORTANCE OF PRIOR ART SEARCHES BEFORE FILING AN INDUSTRIAL DESIGN REGISTRATION OR INITIATING AN INDUSTRIAL DESIGN ACTION, TO ENSURE THAT A PROPOSED DESIGN IS INDEED ORIGINAL.
Industrial designs protect original “features of shape, confi guration, pattern or ornament and any combination of those features that, in a fi nished article, appeal to and are judged solely by the eye”. Functional characteristics or methods or principles of construction are not protected by industrial designs. In this case, the space between the double walls of the glasses had a utilitarian function (to keep hot drinks hot and cold drinks cold) and therefore had to be ignored in assessing infringement.
In order for there to be infringement, the Trudeau glasses had to be “substantially the same” as the registered Bodum designs. The court’s assessment was done through the eyes of the “informed consumer” and took into account how the designs differ from the prior art.
The court did a side-by-side comparison of the lines, in particular the curvatures and proportions of the glasses and designs. The court also reviewed the prior art designs put forward by Trudeau.
Given that that the interior line of the Trudeau glasses become concave near the rim whereas the Bodum designs have convex lines (see below) and that the diff erences with the prior art were very minimal, the court rejected Bodum’s infringement claim. T e Trudeau glasses were found to be more similar to one of Bodum’s own glasses (or glass designs) from 1991.
T e court also found Bodum’s industrial design registrations invalid for not meeting the originality requirement.
While industrial design registrations are underused, inexpensive tools that should be considered by more companies, this case highlights
www.worldipreview.com World Intellectual Property Review e-Digest 2013 47
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