[author: Kratz, Martin P.J]
Industrial design protection is an often overlooked form of protection that is a poor cousin of Copyright. For historical reasons, Canadian law prejudices against certain authors who create designs which can be applied to useful articles. By virtue of Section 64(2) of the Copyright Act, RSC 1985, c C-42, if more than 50 copies of the articles are made by or at the direction of the owner of the copyright in the design then substantial copyright and moral rights protection is lost. Protection may be available under the Industrial Design Act, RSC 1985, c I-9 (IDA), a registry system.
We see so few cases of industrial design litigation that, when we see a case, it is noteworthy and interesting to see what can be learned about the development of the law in this field. In Bodum USA, Inc. (Bodum) and PI Design AG. v. Trudeau Corporation (1889) Inc., 2012 FC 1128 the Federal Court had an opportunity to consider such a case in the modern era and to confirm the proper approach to be taken for the legal test of infringement and of invalidity of an industrial design.
The starting point is Section 9, IDA, which provides that an exclusive right for an industrial design may be acquired by registration of the design under the Act.
The Bodum case involved a claim by the plaintiff in designs of double-walled glasses. The defendant also made double-walled glasses. The benefit of double-walled glasses is that they provide insulating properties. That is a useful feature.
Like Section 64.1 of the Copyright Act in respect of copyright law, Section 5.1 of the IDA provides that a registered industrial design does not protect useful features of a work.
As a result in this case, it is the configuration of the double-walled glasses of each party that is of particular relevance.
The court identified the steps for the assessment of infringement and invalidity. That analysis should be of interest to all of those who may wish to rely on industrial design protection.
The Court noted that in a case, as at present, where both parties made double-walled glasses "to establish infringement where the shape or configuration of the whole of an article of this kind is the essence of the design, I think there must be shown to be something reasonably approaching identity".1
The Court found that the defendant's double-walled glasses must be characterized as substantially the same for there to be infringement and, in its analysis, that the Court will ignore the utilitarian function of the double-walled glasses. The Court also noted that industrial designs and prior art must be compared by ignoring the construction, colour and material processes.2
The Court noted that the analysis of the infringement issue commences with consideration of the prior art. In this case there had been many different designs of double-walled glasses which had existed prior to the priority date of the plaintiff's application.
Expert evidence was called to show the differences between the prior art and the plaintiff's designs. The Court also heard expert evidence on the differences between the party's designs.
Section 11(1)(a) IDA provides that "During the existence of an exclusive right, no person shall, without the licence of the proprietor of the design, ... (a) make, import for the purpose of trade or business, or sell, rent, or offer or expose for sale or rent, any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied..." Section 11(2) IDA provides that "in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account".
The parties disagreed on the legal test to be applied for an assessment of the infringement allegations between the design. The plaintiffs asserted that infringement must be assessed by carrying out an analysis the way the consumer would see it and by applying the three-pronged imperfect recollection test3 as follows: (a) The designs that are the subject of the comparison must not be examined side by side, but separately, so that imperfect recollection can guide the visual perception of the finished article; (b) One must look at the entirety, and not the individual components of the design; and (c) Any change with respect to prior art must be substantial.4 The defendant took the position that the legal test for assessment of infringement would be carried out from the perspective of how an aware consumer would see the designs. The defendants also asserted that the three-pronged test was no longer applicable after the 1993 amendments to the IDA.
After considerable analysis the Court held that the alleged infringing product must be analyzed by the Court from the point of view of how the informed consumer would see things.5
Applying that legal test, the Court ruled that the defendant's double-walled glasses did not have the features attributed to them by the plaintiff and therefore were not infringing.
The Court also assessed the validity of the plaintiff's industrial design registrations in light of the prior art cited in the case. The Court held that to be registrable, an industrial design must be substantially different from prior art.6 In addition to novelty the industrial design also required some spark of inspiration in order to be registrable.7 The Court applied these principles by comparing the prior art and the industrial designs in question, by focusing on lines and by ignoring the manufacturing processes, materials used and colours. As a result the Court held that the designs do not vary substantially from the prior art. As a result the Court held that the applicable designs did not have the required originality and therefore were found not to be entitled to protection under the IDA and were ordered expunged from the register.
The Bodum case gives us a fresh confirmation of the rules that will be applied in the case of assessing infringement and invalidity of industrial design registrations and therefore gives industrial design applicants and their competitors a framework for assessing the scope of these rights.
Sommer Allibert (UK) Limited and Another v Flair Plastics Limited,  25 RPC 599 at page 625 (UK ChD, appeal) citing Jones & Attwood Ltd v National Radiator Company Ltd (1928) 45 RPC 71 at 84
Bata Industries Ltd v Warrington Inc.,  FCJ No 239, 5 CPR (3rd) 339, at page 345 (FCTD).
Valor Heating Co. v Main Gas Appliances Ltd.,  FSR 497.
Per Les Industries Lumio (Canada) Inc. v Denis Dusablon et al, 2007 QCCS 1204, (CST 700-17-001314-037, March 20, 2007) at para. 182.
Citing Rothbury International Inc v Canada (Minister of Industry), 2004 FC 578, at para 31; see also Algonquin Mercantile Corporation v Dart Industries Canada Ltd, (1984), 1 CPR (3d) 75, at page 81); Sommer Allibert, supra, at pages 624-25).
Citing Clatworthy & Son Ltd v Dale Display Fixtures Ltd,  SCR 429, at page 433.
Citing Bata, supra, at page 347.