Federal Court Expunges Bodum Industrial Design Registrations

In Bodum USA, Inc v Trudeau Corporation (1889) Inc (2012 FC 1128), Justice Boivin of the Federal Court of Canada found that Trudeau Corporation did not infringe either of two Bodum USA industrial designs registered under the Industrial Design Act (Act) for double wall glasses, and also found that both registrations were invalid. The allegedly infringing Trudeau glasses are shown below beside drawings of the two Bodum designs from the registrations. Bodum admitted that the double walls, which are separated by a space containing air in the corresponding products sold by Bodum, have a utilitarian function. As compared to a single walled glass, they reduce the rate of heat exchange between a liquid inside the glass and the outside environment, and so tend to keep hot drinks hot and cold drinks cold. Similarities between the Trudeau and Bodum designs arising from this utilitarian function must be ignored in assessing infringement. It was of key importance in assessing infringement that Trudeau showed that there were many similar prior art glasses, apparently with double walls, existing prior to the filing date of Bodum’s design applications. Justice Boivin noted that nothing in the registration indicated whether the space between the two walls was filled with air, liquid or gas. As a result, prior art with any of these was relevant, such as a glass or dish with relatively thick glass walls. Justice Boivin accepted the evidence of the only expert witness, who was called by Trudeau, who concluded that the differences between Bodum’s designs and the prior art were minimal. As provided by subsection 12(2) of the Act, in assessing the similarity of an allegedly infringing item with a design, the court may take into account how the registered design differs from the prior art Given that the interior lines of the Bodum designs are completely convex, whereas those of the Trudeau glasses become concave near the top, and the limited differences between the Bodum designs and the prior art, Justice Boivin found that there was no infringement. Although the Act provides that a registration is valid in the absence of proof to the contrary (as opposed to the Patent Act¸ which only requires “any evidence to the contrary”), Justice Boivin found that the prior art adduced by Trudeau did prove that the Bodum registrations were invalid because Bodum’s designs did not differ substantially from that prior art, and so he ordered them expunged. This is a rare Canadian industrial design case, and practitioners in this area will be watching the progress of the appeal (A-450-12, filed October 25, 2012) with interest. Summary by: Tom Feather