Law Times

Law Times • January 28, 2013 Page 11 FOCUS Rare industrial design ruling Federal Court dismisses infringement claim BY MICHAEL McKIERNAN Law Times A rare industrial design decision from the Federal Court should spur Canadian companies to rethink their approach to intellectual property assets, says a lawyer practising in the field. In September last year, Federal Court Justice Richard Boivin dismissed an infringement claim by kitchenware giant Bodum USA Inc. against its Quebec-based rivals Trudeau Corp. (1889) Inc. over doublewall drinking glass designs registered by Bodum. The judge also ruled Bodum's registered designs were invalid. "I would hope we can see more interest in design as a result," says James Longwell, national practice group leader for patents at Gowling Lafleur Henderson LLP. "The thing to take from this is that designs are important and that it's not just patent rights companies should be thinking about. When they are buying products, consumers are looking very closely at designs. When consumers start buying based on looks, then people can start riding coattails. You can adopt the visual appearance of something without providing the same functionality. If it looks the same, they're kind of getting the same benefits and you can't do anything about that from a patent or trademark perspective." Longwell says companies that have been thinking about industrial design have an advantage over competitors but notes it's never too late to start. He points to computer heavyweights Apple Inc., a company known for its devotion to design, and rival Samsung Electronics Co. Ltd. Yet "Apple's design portfolio, including their functional and design patents, was very small until just a couple of years ago," according to Longwell. "They've built it up very well in the short term. You can see now a number of successful companies who distinguish themselves from others using product designs. Apple is a good example, but there are others. . . . Microsoft and Nike have been filing them for years." Industrial design registrations are less frequent north of the border and the rarity of a decision on point is evident in the career of François Guay, the partner at Smart & Biggar/ Fetherstonhaugh who defended Trudeau Corp. against Bodum. He jokes that his grand total of two industrial design trials, separated by almost three decades, probably makes him "the most experienced industrial design litigator in the country." He may also be among the most successful: back in 1985, he also won a case involving infringement of shoe designs registered by Bata Industries Ltd. "Between the Bata and the Bodum decision, I think there's been only two or three cases that went all the way to trial in Federal Court," says Guay. "If you sue someone for infringement, often they can design around it and you end up settling. So it was nice to have a case that went all the way to trial." Bodum registered two designs for double-wall glasses in 2004 shortly after unveiling them at a trade fair in Frankfurt in 2003. In 2006, Trudeau launched its own double-wall glasses. The infringement lawsuit began a year later. But Boivin sided with Trudeau, finding that its designs were actually more similar to the prior art than the registered ones. "The court finds that the Trudeau glasses do not have the features attributed to them by the plaintiffs and that the Trudeau glasses are not infringing products," the judge wrote in his Sept. 26 decision. "Even if the court disregarded the prior art, the Trudeau glasses have almost none of the features of the configuration of the industrial designs in question." Boivin then went even further and granted Trudeau's counterclaim for invalidity of Bodum's registered designs, finding they weren't sufficiently original when compared with pre-existing ones. "By comparing the prior art submitted into evidence and the industrial designs in question, by focusing on lines and by ignoring the manufacturing processes, materials used, and colours, the court finds that the designs do not vary substantially," Boivin wrote. "Even though Mr. Perez, the president of Bodum USA Inc., testified that the inspiration . . . came from a sake bowl that Jörgen Bodum apparently saw in Japan — Jörgen Bodum did not testify at the trial — the evidence nevertheless demonstrates that the field of glassware, like the fields of shirt collars and shoes, is a field that has existed for a long time. They are articles used daily and, therefore, the difference must be marked and substantial." "We were certainly very happy to win," says Guay. "It would have been easy for the judge to conclude there was no infringement and that therefore he didn't need to deal with the invalidity issue but he did. I won't say I was surprised but I like the fact he had the guts to deal with that as well." In making the decision, Boivin rejected Bodum's proposed test for infringement that would have prevented the allegedly infringing designs from a side-by-side comparison with the registered ones so that, according to its argument, "imperfect recollection can guide the visual perception of the finished article." According to Longwell, that approach has grounding in English case law. But the judge sided with Trudeau, which argued it was no longer applicable in Canada. Boivin "really went towards this test of an informed consumer looking at the designs side by side and trying to determine if there's a substantial similarity," says Longwell. "With imperfect recollection, you're sort of presumed to be buying something more quickly with an idea of what the registered design is. Then you see the other allegedly infringing one and say, 'That's pretty close.' It doesn't have to be as similar as it would when you're looking at them side by side, so it's a pretty big difference." www.lawtimesnews.com Untitled-2 1 'The thing to take from this is that designs are important and that it's not just patent rights companies should be thinking about,' says James Longwell. He says the approach is similar to the one taken in the United States where the law judges potential infringements through the eyes of an "ordinary observer" rather than an expert. One key difference, though, is that south of the border, it's juries that make the ultimate findings on infringement. However, last year's case involving Apple and Samsung allayed any thought that that approach might tilt the system in favour of plaintiffs. In that case, a jury refused to find infringement by Samsung of various Apple designs despite a judge's comment during a preliminary hearing in the case that Samsung's allegedly infringing tablets were "virtually indistinguishable" from Apple's designs. Back in Canada, Bodum has filed an appeal and retained new lawyers to bring the case forward but neither its former nor its current counsel would comment on the matter. The firm has been on a bit of an intellectual property enforcement kick in Canada as of late and was again on the wrong end of a Federal Court decision at the end of 2012. This time, the firm sued Meyer Housewares Canada Inc. for using the term "French press" on packaging for its non-electric coffee makers, a phrase trademarked by Bodum back in 1997. But in a Dec. 10 decision, Federal Court Justice Richard Mosley declined to issue an injunction against Meyer and instead granted a request to invalidate Bodum's trademark. "I agree with the defendant that 'French press' is and was at all relevant times a common name for the type of nonelectric coffee-making device at issue in these proceedings and the method of brewing coffee using such a device," wrote Mosley. "The term was not distinctive when the application for registration was filed, when it was completed or when proceedings bringing the validity of the registration into question were commenced. The registration is invalid because the term was and is in ordinary and bona fide commercial use as a generic term." LT 1/26/11 3:59:49 PM

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