Don’t Overlook Industrial Designs: Part 1

more+
less-
more+
less-

image003.jpgIndustrial designs are like the shy cousins of much sexier patents and copyright. Sure, patents and copyright get all the attention, but industrial design can be a very reliable, useful tool in the intellectual property toolbox. This category of protection (in the US, known as “design patents”) will protect the visual features of a product (shape, configuration, pattern or ornament). 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.

In Bodum USA, Inc. v. Trudeau Corporation, 2012 FC 1128 (CanLII), the court considered two competing double-walled drinking glasses, one of which (the design owned by Bodum) was registered as an industrial design. The double-wall configuration itself serves a utilitarian function: it keeps hot drinks hot and cold drinks cold. Thus, the double-walled feature 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.

Related Reading:

Industrial Design in Canada & US

 

Topics:  Design Patent, Industrial Design, Infringement

Published In: Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Field Law | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »