CLASS 99
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TUESDAY, 6 NOVEMBER 2012
Canadian Court cracks Bodum's glassware
Smart and Biggar Fetherstonehaugh, who represented the winning defendants, report here the recent Federal Court of Canada in Bodum and PI v Trudeau, 2012 FC 1128, the first substantive design infringement case under the current (1993) revision of the infringement provisions. To cut to the chase, Bodum lost because the prior art was closer than the infringement. That made it inevitable that the design would be either not infringed or invalid, and in fact the Court found it was both.
Several features of the decision will resonate with European readers. First, the role of imperfect recollection (which the CJEU has stated to have some limited relevance in both of the two design cases it has so far heard). The Canadian court referred to Valor Heating v Main Gas Appliances, [1972] FSR 497, in which Whitford J summarised the development of the doctrine of imperfect recollection in design cases to that date: "It is quite obvious that it may be very easy to take it too far, but the cases which were cited to me ... do I think establish this, that quite plainly in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw." The Court neither criticised nor applied Valor on that point.
Second, the test person. The Court explained the development of the "informed consumer" standard and found it synonymous with the French term "consumer averti" ("aware consumer").
The purpose of the double wall was thermal insulation, as Bodum's advertising made clear. When considering infringement, the Court apparently assumed that the lines did indeed represent a double wall so that the air gap was considered to have been dictated by function and was ignored in considering infringement (following Sommer Allibert v Flair Plastics, [1987] 25 RPC 599 at 625). However, nothing in the design registrations indicated that the lines drawn showed a double wall with an air gap. Thus, prior art showing thick walled glasses could anticipate. This different treatment of the design for infringement and validity purposes seems to have contributed to the finding that it was both invalid and not infringed. Posted by: David Musker @ 13.08
Tags: Canada, functionality, imperfect recollection, infringement, validity,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA393
Canadian Court cracks Bodum's glassware
Smart and Biggar Fetherstonehaugh, who represented the winning defendants, report here the recent Federal Court of Canada in Bodum and PI v Trudeau, 2012 FC 1128, the first substantive design infringement case under the current (1993) revision of the infringement provisions. To cut to the chase, Bodum lost because the prior art was closer than the infringement. That made it inevitable that the design would be either not infringed or invalid, and in fact the Court found it was both.
Several features of the decision will resonate with European readers. First, the role of imperfect recollection (which the CJEU has stated to have some limited relevance in both of the two design cases it has so far heard). The Canadian court referred to Valor Heating v Main Gas Appliances, [1972] FSR 497, in which Whitford J summarised the development of the doctrine of imperfect recollection in design cases to that date: "It is quite obvious that it may be very easy to take it too far, but the cases which were cited to me ... do I think establish this, that quite plainly in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw." The Court neither criticised nor applied Valor on that point.
Second, the test person. The Court explained the development of the "informed consumer" standard and found it synonymous with the French term "consumer averti" ("aware consumer").
The purpose of the double wall was thermal insulation, as Bodum's advertising made clear. When considering infringement, the Court apparently assumed that the lines did indeed represent a double wall so that the air gap was considered to have been dictated by function and was ignored in considering infringement (following Sommer Allibert v Flair Plastics, [1987] 25 RPC 599 at 625). However, nothing in the design registrations indicated that the lines drawn showed a double wall with an air gap. Thus, prior art showing thick walled glasses could anticipate. This different treatment of the design for infringement and validity purposes seems to have contributed to the finding that it was both invalid and not infringed. Posted by: David Musker @ 13.08
Tags: Canada, functionality, imperfect recollection, infringement, validity,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA393
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