2012 FC 1128, 2012 FC 1128

[2013] 3 F.C.R. 372 T-735-07 2012 FC 1128 Bodum USA, Inc. and PI Design AG. ( Plaintiffs/Defendants by Counterclaim ) v. Trudeau Corporation

(1889) Inc. ( Defendant/Plaintiff by Counterclaim ) Indexed as: Bodum USA, Inc. v. Trudeau Corporation

(1889) Inc. Federal Court, Boivin J.—Montréal, May 22, 23, 24 and 29; Ottawa, September 26, 2012.

Industrial Design — Infringement — Invalidity — Registration — Action seeking relief in application of Industrial Design Act on ground, inter alia, of infringement of two Canadian industrial designs registered under numbers 107736, 114070 corresponding to Bodum USA, Inc.’s (Bodum) double wall glasses marketed by Bodum — Defendant denying committing any violation or creating confusion with own wares, those of Bodum; by counterclaim, seeking declaration industrial designs in question invalid — Plaintiff PI Design AG. holding intellectual property of Bodum USA, Inc., including industrial designs at issue; defendant designing, manufacturing “Trudeau”, “Home Presence by Trudeau” brand kitchen products — Bodum introducing double wall glasses to Canadian market in 2003/2004; defendant introducing double wall glasses to Canadian market in 2006 — Whether plaintiffs’ industrial designs 107736, 114070 infringed; whether registration thereof invalid — In infringement analysis, Federal Court required to disregard utilitarian function of double wall glasses — Regarding prior art, evidence showing that double wall glasses existing when Bodum introducing own double wall glasses on Canadian market — Parties disagreeing on legal test applicable to comparative analysis Federal Court having to apply to determine whether infringement occurring herein — Plaintiffs claiming that three-pronged test developed in England (“imperfect recollection” doctrine) applicable while defendant claiming test no longer applying since Act amended in 1993 — While issue not ruled upon, relevance of three-prong test since 1993 amendment may be questioned — Use of expressions “aware consumer”, “informed consumer”, whether expressions different discussed — Issue of using expression “aware consumer” or “informed consumer” constituting false debate; alleged infringing product having to be analysed on basis of how informed consumer would see things — Based on evidence, defendant’s glasses not having features attributed thereto by plaintiffs; not infringing Bodum products — Prior art clearly demonstrating that lines of industrial design 107736 existing back to 1897; proportions of industrial designs at issue compared with defendant’s glasses showing that proportions differing — As to invalidity, comparison of prior art with industrial designs in question showing designs not varying substantially — Industrial designs thus not satisfying requirement of substantial originality; therefore, having to be expunged from register — Action dismissed; counterclaim allowed.

This was an action by the plaintiffs against the defendant seeking relief in application of the Industrial Design Act on the ground of infringement of two Canadian industrial designs registered under numbers 107736 and 114070 which correspond to Bodum USA, Inc.’s (Bodum) double wall glasses marketed by Bodum. The defendant denied committing any violation or creating any confusion with its wares and those of Bodum. By counterclaim, it sought a declaration that the industrial designs in question are and have always been invalid.

The plaintiff PI Design AG., a foreign company, holds the intellectual property of the company Bodum USA, Inc., including the industrial designs at issue. PI Design AG. granted Bodum USA a licence to distribute “Bodum” brand products, in particular, in North America.The defendant, a Canadian company, is dedicated to designing, manufacturing and importing “Trudeau” and “Home Presence by Trudeau” brand kitchen products in Canada and around the world. Bodum introduced its double wall glasses to the Canadian market at the end of 2003 or the beginning of 2004 and filed its industrial designs in question in July 2004.

It registered those industrial designs with the Office of the Commissioner of Patents of the Canadian Intellectual Property Office in Februrary 2006. The priority date for those industrial designs is February 18, 2004. Industrial designs protect visual features of an

article but not utilitarian function, which in this case, meant the space between the double walls of the glass. The defendant’s double wall glasses were introduced to the Canadian market in the fall of 2006 and it was aware of the double wall glasses marketed by Bodum at that time. The plaintiffs commenced their action against the defendant in May 2007. The issues were whether there was infringement of the plaintiffs’ industrial designs 107736 and 114070 and whether the registration of those industrial designs was invalid. Held , the action should be dismissed and the counterclaim should be allowed.

The functional element of Bodum’s double wall glasses is the space between the interior and exterior walls of the double wall glasses. The configuration of the double wall glasses was of particular relevance in this case. The defendant’s double wall glasses had to be characterized as substantially the same as the industrial designs in question for there to be infringement and, in the Federal Court’s analysis, the utilitarian function of the double wall glasses was disregarded.

Regarding the prior art, the evidence showed that double wall glasses existed when Bodum introduced its double wall glasses on the Canadian market in 2003/2004. The parties did not agree on the legal test applicable to the comparative analysis the Court had to apply to determine whether infringement, as defined in

section 11 of the Act , occurred herein. The plaintiffs claimed that the three-pronged test developed in England that refers to the doctrine of “imperfect recollection” had to be applied while the defendant claimed that this test was no longer applicable since the 1993 amendment of the Act and that the test should be carried out from the point of view of how the aware consumer would see things. A comparison of

section 11 of the Act before the amendment of 1993 and after the amendment of 1993 showed that the pre-1993 version contained an element of “fraudulent imitation” whereas the element was removed by the 1993 amendment and replaced with the concept of “design not differing substantially”. Without ruling on the issue, it was noted that the application of the three-pronged test may raise a certain number of questions with respect to its relevance, in light of the 1993 amendment

of

section 11 of the Act. The use of the expressions “aware consumer” and “informed consumer” and whether they were different was discussed. It was shownthat the French words “averti” and “informé” mean the same thing and could thus be considered synonyms of the English expression“informed consumer”. Therefore, the issue of using the expression “aware consumer” or “informed consumer” was a false debate and thealleged infringing product had to be analysed from the point of view of how the informed consumer would see things.

Based on the evidence, it was found that the defendant’s glasses did not have the features attributed to them by the plaintiffs and that thedefendant’s glasses were not infringing products. Firstly, prior art clearly demonstrated that the lines of industrial design 107736 existeddating back to 1897. Moreover, a comparison of the proportions of the industrial designs at issue with the defendant’s glasses showedthat the proportions differed, namely with respect to the exterior curves and openings.

In light of the evidence, the defendant’s glassesare a lot more similar to some pre-2003 glasses than to the industrial designs in question in this case. Even if the Federal Court were todisregard the prior art, the defendant’s glasses have almost none of the features of the configuration of the industrial designs that were atissue. The defendant’s counterclaim argument that the industrial designs in question were invalid was examined. To be registrable, an industrialdesign must be substantially different from prior art.

A simple variation is not sufficient; the designs in question must show originality.By comparing the prior art submitted into evidence and the industrial designs in question, by focussing on lines and by ignoring themanufacturing processes, materials used and colours, it was found that the designs did not vary substantially. Therefore, the industrialdesigns in question did not meet the criteria defined by the case law entitling them to registration.

As a result, they did not satisfy therequirement of substantial originality and, consequently, they were not entitled to the protection set out in the Act and had to be expungedfrom the register. STATUTES AND REGULATIONS CITED Industrial Design Act, R.S.C., 1985, c. I-9, ss. 2 “design” (as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 20), “utilitarian function” (as am.idem), “variants” (as am. by S.C. 1993, c. 44, s. 161), 5.1 (as enacted by R.S.C., 1985 (4th Supp.), c. 10, s. 21), 6(1) (as am. by S.C.1993, c. 44, s. 162), 7(1) (as am. by S.C. 1993, c. 15, s. 15), (3) (as am. by S.C. 1992, c. 1, s. 143, Sch.

VI, Item 16), 9, 10 (as am. byS.C. 1993, c. 44, s. 163), 11 (as am. idem, s. 164), 17 (as am. idem, s. 168). Trade-marks Act, R.C.S., 1985, c. T-13, s. 7(a),(b). CASES CITED applied: Sommer Allibert (U.K.) Limited and Another v. Flair Plastics Limited, [1987] 25 R.P.C. 599 (Ch.D.); Bata Industries Ltd. v. WarringtonInc. (1985), 5 C.P.R. (3d) 339 (F.C.T.D.); Rothbury International Inc. v. Canada (Minister of Industry), 2004 FC 578, [2005] 1 F.C.R.130, 36 C.P.R. (4th) 203, 257 F.T.R. 280; Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd., (SCC), [1929] S.C.R.429, [1929] 3 D.L.R. 11. considered: Valor Heating Co.

Ltd. v. Main Gas Appliances Ltd., [1972] F.S.R. 497, [1973] R.P.C. 871 (Ch.D.); Industries Lumio (Canada) inc. c.Dusablon, 2007 QCCS 1204, [2007] R.J.Q. 1216. referred to: Bodum USA Inc. v. Trudeau Corporation

(1889) Inc., 2012 FC 240, 101 C.P.R. (4th) 455; Jones & Attwood Ltd. v. National RadiatorCompany Ltd. (1928), 45 R.P.C. 71 (Ch.D.); Algonquin Mercantile Corporation v. Dart Industries Canada Ltd. (1984), 5 C.I.P.R. 134, 1C.P.R. (3d) 75 (F.C.A.); Le May v. Welch (1884), 28 Ch.D. 24 (C.A.). AUTHORS CITED Halsbury’s Laws of England, 4th ed., Vol. 48. London: Butterworths, 1984. Larousse French-English/English-French Dictionary. Paris: Larousse, 1994, “averti”, “ informed”. Le Petit Robert de la langue française, 2006. Paris: Le Robert, 2006, “averti”, “informé”. McKeown, John S.

Fox Canadian Law of Copyright and Industrial Designs, 3rd ed. Toronto: Thomson/Carswell, 2000. McKeown, John S. Fox Canadian Law of Copyright and Industrial Designs, 4th ed., loose-leaf. Toronto: Thomson/Carswell, 2003. ACTION by the plaintiffs seeking relief in application of the Industrial Design Act on the ground of infringement of two Canadianindustrial designs and COUNTERCLAIM by the defendant seeking a declaration of invalidity. Action dismissed and counterclaimallowed. APPEARANCES Christopher Atchison for plaintiffs. François Guay and Ekaterina K. Tsimberis for defendant. SOLICITORS OF RECORD

Atchison Law Firm , Montréal, for plaintiffs. Smart & Biggar , Montréal, for defendant. The following is the English version of the public reasons for judgment rendered by Boivin J.: I. Overview [ 1 ] Bodum USA, Inc. (Bodum) and PI Design AG. (collectively the plaintiffs) are commencing an action against the company Trudeau Corporation

(1889) Inc. (Trudeau or the defendant) and are seeking relief in application of the Industrial Design Act , R.S.C., 1985, c. I-9 (Act) on the ground of infringement of two Canadian industrial designs registered under numbers 107736 and 114070 (industrial designs), which correspond to Bodum double wall glasses marketed by Bodum. [ 2 ] As part of their action, the plaintiffs are also claiming that Trudeau violated paragraph 7(

b) of the Trade-marks Act , R.S.C., 1985, c. T-13 , and are raising allegations of unfair competition (offence of confusion). The plaintiffs are seeking a permanent injunction against Trudeau as well as the profits in connection with its activities. [ 3 ] Trudeau denies acting in violation of the industrial designs in question. Trudeau also denies directing public attention to its wares in such a way as to cause or be likely to cause confusion between its wares and the wares of Bodum.

Furthermore, as plaintiff by counterclaim, Trudeau is seeking a declaration that the industrial designs in question are and have always been invalid. [ 4 ] For the following reasons, the Court finds that the plaintiffs’ action should be dismissed and that Trudeau’s counterclaim should be allowed. II. Factual background The parties [ 5 ] The plaintiff PI Design AG. is a company established in accordance with Swiss laws, and has its place of business in Lucerne, Switzerland.

It holds the intellectual property of the company Bodum USA, Inc., including industrial designs 107736 and 114070. [ 6 ] The company Bodum was founded in Denmark in 1944 and markets kitchen products. The plaintiff Bodum USA, Inc. is a company established in accordance with American laws, and its place of business is in New York City in the United States. [ 7 ] PI Design AG. granted Bodum USA, Inc. a licence to distribute “BODUM” brand products in the United States, Canada, Mexico and South America. Bodum USA, Inc. has no place of business in Canada.

Canadian retailers are supplied from the United States. [ 8 ] The defendant, Trudeau, is a company established in accordance with Canadian laws, and its place of business is in Boucherville, Quebec. Founded in 1889, Trudeau is dedicated to researching and developing, designing, manufacturing, importing and marketing “Trudeau” and “Home Presence by Trudeau” brand kitchen products in Canada and around the world. The industrial designs and the glasses in question [ 9 ] Industrial design 107736 (TX-1) [1] is described as follows:

Image Fig. 1 Image Fig. 2 Image Fig. 6 Industrial design No 107,736 (Exhibit TX-1) The design consists of the visual features of the entirety of the drinking glass shown in the drawings.

Drawings of the design are included wherein: Figure 1 is an oblique perspective view of the design; Figure 2 is a front view of the design; [Figure 3 is a rear view of the design; Figure 4 is a right view of the design; Figure 5 is a left view of the design]; Figure 6 is a top view of the design; and [Figure 7 is a bottom view of the design]. [ 10 ] Industrial design 114070 (TX-214) [2] is described as follows: Image Fig. 1 Image Fig. 2 Image Fig. 6 Industrial design No 114,070 (Exhibit TX-214) The design consists of the visual features of the entirety of the drinking glass shown in the drawings.

Drawings of the design are included wherein: Figure 1 is a perspective view of the design; Figure 2 is a front view of the design; [Figure 3 is a rear view of the

design; Figure 4 is a right side view of the design; Figure 5 is a left side view of the design]; Figure 6 is a top view of the design; and [Figure 7 is a bottom view of the design]. [ 11 ] The glass models TX-186 and TX-47 sold by Trudeau that are at issue in this case are as follows: Image Trudeau glass Image Trudeau glass (Exhibit TX-186) (Exhibit TX-47) Product number: 4,601,063 Product number: 4,601,064 Earlier proceedings [ 12 ] Bodum introduced its double wall glasses for the first time in August 2003 at the Ambiente trade fair in Frankfurt, Germany. [ 13 ] Subsequently, Bodum’s double wall glasses were introduced to the Canadian market towards the end of 2003 or the beginning of 2004 (T86 – May 22). [ 14 ] The industrial designs 107736 and 114070 were filed on July 27, 2004.

The industrial designs were registered with the Office of the Commissioner of Patents of the Canadian Intellectual Property Office on February 1, 2006. The priority date for the industrial designs in question is February 18, 2004. The industrial designs have no registered variants. [ 15 ] The Court notes that the industrial designs in question were not identified by the letter “D” in a circle with the name or the usual abbreviation of the proprietor of the design as set out in

section 17 [as am. by S.C. 1993, c. 44 , s. 168] of the Act . [ 16 ] Trudeau’s double wall glasses were introduced to the Canadian market in the fall of 2006. At the time, Trudeau was aware of the double wall glasses marketed by Bodum. [ 17 ] On January 31, 2007, the plaintiffs sent a letter of formal notice to Trudeau. On May 1, 2007, the plaintiffs commenced this action in the Federal Court against Trudeau. [ 18 ] On November 9, 2009, Prothonotary Morneau issued a confidentiality order.

The order was renewed by the undersigned on May 16, 2012. [ 19 ] On April 13, 2011, before the trial started, counsel for Trudeau served on counsel for the plaintiffs a written offer to settle. [ 20 ] On January 30, 2012, Prothonotary Morneau rendered a decision setting security for Trudeau’s costs at $55 000. That decision was appealed. On February 21, 2012, Justice de Montigny set aside Prothonotary Morneau’s decision [2012 FC 240 , 101 C.P.R. (4th) 455] in part and increased security for Trudeau’s costs to $75 000. III. Issues [ 21 ] The issues raised in this case are the following:

(1) Was there infringement of industrial designs 107736 and 114070?

(2) Is the registration of industrial designs 107736 and 114070 invalid?

(3) Does Trudeau’s marketing of double wall glasses constitute unfair competition (offence of confusion)? IV. Fact witnesses [ 22 ] One fact witness was heard on behalf of the plaintiffs: Thomas Perez. Thomas Perez [ 23 ] Mr. Perez is the President of Bodum USA, Inc. He testified that he has worked at Bodum since June 2000 and that he has been the President of Bodum USA, Inc. since September 2007. Mr. Perez provided Bodum’s history and its connection to PI Design AG. In addition, Mr. Perez testified as to the presence of Bodum products on the Canadian market since the 1970s. Mr.

Perez presented various products sold by Bodum in Canada as well as Bodum’s sales figures in Canada. More specifically, Mr. Perez testified as to the company’s sales percentages and their breakdown into, namely, coffee presses, double wall glasses, tea products and finally, electrical appliances and other coffee makers. [ 24 ] Regarding double wall glasses, Mr. Perez indicated that the double wall glass design was inspired by a small Japanese sake bowl spotted by Jørgen Bodum (T93 – May 22). Mr. Perez also described the introduction of the double wall glasses to the Canadian market and their marketing.

In cross-examination, counsel for Trudeau raised questions concerning the amount of Bodum sales in Canada and questions with respect to the industrial designs at issue. Furthermore, counsel for Trudeau guided Mr. Perez through a comparison

between a variety of glasses and industrial designs. [ 25 ] The defendant, Trudeau, presented two fact witnesses: Robert Trudeau and Charles Harari. Robert Trudeau [ 26 ] Mr. Trudeau shared the story and evolution of the Trudeau company. [ 27 ] Mr. Trudeau is President of Trudeau’s Board and has worked within the Trudeau company since 1967. He indicated that the company started to develop kitchen products in the 1980s. It was in 1995 that the company created the “Trudeau” and “Home Presence by Trudeau” brands. Mr.

Trudeau testified as to the percentage of Trudeau products that are designed and manufactured by the company itself and then on the remaining percentage that represents Walt Disney brand products and Bormioli brand products distributed by the company in Canada. [ 28 ] Mr. Trudeau also testified as to the diversity of the products sold by Trudeau on the Canadian market as well as the types of stores where products are available. In cross-examination, Mr. Trudeau confirmed that a children’s double wall glass was created by Trudeau for Walt Disney in the 1990s (T202 – May 22).

That glass was later submitted and shown as Exhibit P-1. Charles Harari [ 29 ] Mr. Harari is vice-president of development at Trudeau. He testified that he has worked for the company since 1994 and that he is currently responsible for intellectual property issues, factory selection, quality control at the office in China, and product development. [ 30 ] Mr. Harari testified as to the research and development of Trudeau’s products. He also indicated that Trudeau has a portfolio of patents and industrial designs. Mr.

Harari also testified as to the marking, labelling and packaging of Trudeau’s products, as well as to the presentation of the products at the points of sale. Furthermore, Mr. Harari addressed the advertising of the company’s products. [ 31 ] Regarding Trudeau’s sale of double wall glasses, Mr. Harari’s testimony pertained namely to the company’s initial agreement with the American company “Formation” (T57 – May 23) and his visit to the Chinese factory in 2006 (T60-62 – May 23), where the double wall glasses are made, and his initial questions concerning the intellectual property of double wall glasses.

He also provided an overview of the various double wall glasses sold on the Canadian market. Finally, Mr. Harari specified that certain stores in Canada offer “Trudeau” brand products whereas others offer “Home Presence by Trudeau” brand products. There were no questions in cross- examination. V. The expert witness [ 32 ] Michel Morand is the only expert witness who appeared before the Court during the trial. He was called by Trudeau. His qualifications as an expert witness in industrial design as well as the content of his report were not the subject of objections by the plaintiffs. Michel Morand [ 33 ] Mr.

Morand obtained a bachelor’s degree in industrial design from the Université de Montréal in 1979. He started his own industrial design consultation office, Enta Design, in 1979. [ 34 ] Mr. Morand gave an overview of the work of an industrial designer and explained the different products that he has designed throughout his career. Mr. Morand admitted that he has never designed a glass, but explained that the same methodology and process are applicable to the field. Mr. Morand stated that the shape of the industrial designs has existed for a long time. Moreover, Mr.

Morand compared the industrial designs and the pre-2003 glasses and determined that the differences between the prior art glasses and the industrial designs are very minimal. Mr. Morand testified that, in his opinion, there was no “spark of inspiration” in the shape of the Bodum double wall glass.

By comparing the industrial designs in question and the Trudeau double wall glasses and by analysing the exterior lines and the interior lines more specifically, he concluded that the interior and exterior lines of the industrial designs in question and the Trudeau glasses were different. [ 35 ] In cross-examination, Mr. Morand admitted that he is not a glassware designer. Mr. Morand also admitted that some glasses included in his report (MM-9, MM-12, MM-10, MM-13, MM-18) were undoubtedly not double wall glasses. Also, Mr.

Morand indicated that he had no physical example of several of the prior art glasses included in his report. Finally, Mr. Morand confirmed that the blue Bodum glass (TX-194) was a double wall glass and that there were no relevant differences in this case between that glass and the Trudeau glasses. VI. Relevant statutory provisions [ 36 ] The relevant legislation is reproduced in Annex A. At this point, the Court reiterates some relevant provisions for the purposes of this case. [ 37 ] First, the Act defines a “design” in

section 2 [as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 20] as being “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye”. [ 38 ] It is also important to note that industrial designs protect the visual features of an article, not its functionality. This principle is codified in

section 5.1 [as enacted idem , s. 21] of the Act :

Restriction on protection 5.1 No protection afforded by this Act shall extend to (

a) features applied to a useful

article that are dictated solely by a utilitarian function of the article; or (

b) any method or principle of manufacture or construction. [ 39 ] Finally, the registration of industrial designs is done in accordance with subsection 6(1) [as am. by S.C. 1993, c. 44 , s. 162] of the Act : Registration of design 6.

(1) The Minister shall register the design if the Minister finds that it is not identical with or does not so closely resemble any other design already registered as to be confounded therewith, and shall return to the proprietor thereof the drawing or photograph and description with the certificate required by this Part. VII. Analysis 1.

Infringement Preliminary remarks [ 40 ] Before beginning to analyse the infringement issue, it is useful to reproduce the industrial designs of the Bodum glasses and the Trudeau glasses side by side: Industrial Designs At Issue TRUDEAU Double Wall Glasses Image Fig. 1 Image Fig. 2 Image Fig. 6 Industrial design No 107,736 (Exhibit TX-1) Image (Exhibit TX-186) and Image (Exhibit TX-47)

Image Fig. 1 Image Fig. 2 Image Fig. 6 Industrial design No 114,070 (Exhibit TX-214) Image (Exhibit TX-186) and Image (Exhibit TX-47) [ 41 ] The industrial designs represent the double wall glasses.

It is also apparent from the hearings that Bodum’s double wall glasses have a utilitarian function and that utilitarian function was admitted by the plaintiffs (plan of argumentation of plaintiffs/defendants by counterclaim, at page 6). [ 42 ] The Court also points out that Bodum’s description of the Pavina series, which includes Bodum double wall glass TX-198, mentions that the utilitarian function of those glasses is to keep hot drinks hot and cold drinks cold. The following description indicates that those glasses are multifunctional: Image

The insulating quality of the double wall glasses doesn’t just keep hot drinks hot for a longer period of time, it also keeps cold drinks cold longer. Another nice thing about them – there is no condensation water when you serve cold drinks, therefore no messy rings on your table. And by the way, they’re great for ice cream as well. Double wall glasses are truly multifunctional. They are made from borosilicate glass and are dishwasher safe. [ 43 ] The utilitarian function of Bodum’s double wall glasses was confirmed by Mr.

Perez, the President of Bodum USA, Inc., during his examination, as making it possible to keep hot liquid hot or cold liquid cold (T89 – May 22). [ 44 ] As such, more specifically, what is the functional element of Bodum’s double wall glasses? In the case at bar, it is the space between the interior and exterior walls of the double wall glasses. [ 45 ] As previously specified, and the parties agree on this point, industrial designs protect visual features but not utilitarian function, that is, in this case, the space between the double walls (John S.

McKeown, Fox Canadian Law of Copyright and Industrial Designs , 4th ed., loose-leaf (Toronto: Carswell, 2003), at page 31-9). [ 46 ] The protection offered by industrial designs should also not be confused with the protection obtained for a product or a process through a patent. As admitted by the plaintiffs, industrial designs do not confer on them monopoly over double wall glasses in Canada (plan of argumentation of plaintiffs/defendants by counterclaim, at page 6). Thus, as explained in Sommer Allibert (U.K.) Limited and Another v.

Flair Plastics Limited , [1987] 25 R.P.C. 599 (Ch.D.) ( Sommer Allibert ), at page 625, the similarities arising from the utilitarian function are not taken into account by the Court in its infringement analysis: 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. [Emphasis added.] (Joint book of authorities, Tab 39, citing Halsbury’s Laws of England , 4th ed., Vol. 48, at paragraph 407.) [ 47 ] In this case, it is the configuration of the double wall glasses that is of particular relevance.

The Court notes that there are two industrial designs at issue in this case: design 107736 (Exhibit TX-1) and design 114070 (Exhibit TX-214). [ 48 ] Industrial design 107736 (Exhibit TX-1) is configured as follows: Configuration Image Fig. 1 Image Fig. 2 Image Fig. 6 Industrial design No 107,736 (Exhibit TX-1) (

i) Height : width proportion [ratio ] 9 : 10 [90%] (ii) Curvature of the exterior wall (bottom ⇒ top) Convex (very rounded) (iii) Curvature of the interior wall (bottom ⇒ top) Convex (very rounded)

(iv) Opening : base proportion [ratio] 2 : 1 [200%] [ 49 ] Industrial design 114070 (Exhibit TX-214) is configured as follows: Configuration Image Fig. 1 Image Fig. 2 Image Fig. 6 Industrial design No 114,070 (Exhibit TX-214) (

i) Height : width proportion [ratio] 6 : 5 [120%] (ii) Curvature of the exterior wall (bottom ⇒ top) Concave ⇒ slightly convex (iii) Curvature of the interior wall (bottom ⇒ top) Concave ⇒ convex (iv) Opening : base proportion [ratio] 4 : 3 [135%] [ 50 ] It is also important to point out that industrial designs claim the design in its entirety as opposed to in part. Industrial designs 107736 (Exhibit TX-1) and 114070 (Exhibit TX-214) mention the following: “The design consists of the visual features of the entirety of the drinking glass in the drawings.” In this case, where emphasis is on the entirety of the design, in order to establish infringement, the

article in question will have to be quasi identical: 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…. ( Sommer Allibert , above, at page 626, citing Jones & Attwood Ltd. v. National Radiator Company Ltd. (1928), 45 R.P.C. 71 (Ch. D.), at page 84.) [ 51 ] It follows that Trudeau double wall glasses must be characterized as substantially the same for there to be infringement and, in its analysis, the Court will ignore the utilitarian function of the double wall glasses, that is, the space between the walls. [ 52 ] The analysis of the infringement issue starts with prior art.

Prior art [ 53 ] With respect to prior art, the plaintiffs claim that the prior art differs from the industrial designs whereas the defendant is of the opposite opinion that the prior art is very similar, if not identical. Relevant date [ 54 ] The relevant date to determine the prior art is not an issue in this case, it is therefore sufficient to note that the relevant priority

date for industrial designs 107736 and 114070 is February 18, 2004. Comparison parameters [ 55 ] In Bata Industries Ltd. v.

Warrington Inc . (1985), 5 C.P.R. (3d) 339 (F.C.T.D.) ( Bata ), at page 345, Justice Reed explained that industrial designs and prior art must be compared by ignoring the construction, colour and material processes: The relevant evidence then, must be considered for the purpose of comparing the pre-existing designs with the registered design; differences in construction, material (leather-canvas, rubber-plastic), and colour (colour is not a part of the registered design in this case) must be ignored.

It is the ornamentation, pattern, design, shape and configuration as set out in the drawings and description of the registered design which must be compared with that of pre-existing shoe designs. [ 56 ] In the context of this case, the Court is mindful of those parameters and now turns to the issue of prior art in this case. Double wall glasses [ 57 ] The trial gave rise to discussions on the existence of double wall glasses prior to the priority date. Mr.

Morand, the expert witness, explained that double wall glasses have existed for a certain number of years, even before 2003, and that a great many patents and industrial designs have provided specifications for double wall glasses. He provided the following examples, in particular: Image MM-14 (December 23, 1952) Image MM-15 (August 30, 1966) Image MM-16 (April 28, 1987) Image MM-17 (December 31, 1991) (Michel Morand’s expert report, at paragraph 23.) [ 58 ] For example, Mr.

Morand referred to U.S. patent 3,269,144 from 1966 entitled “Double Wall Tumbler Having Cooling Means Therein” (T39-40 – May 24 and Exhibit MM-15) and U.S. patent 289,484 from 1987 entitled “Double Wall Insulated Tumbler” (T40 – May 24 and Exhibit MM-16). Mr. Morand is therefore of the opinion that [ translation ] “double wall [glasses] have existed for a long time” (T40 – May 24). [ 59 ] Furthermore, the evidence shows that Bodum marketed a blue plastic double wall glass in 1991 (Exhibit D-1, tabs 6–9; Exhibit TX-194).

In light of the evidence, the Court finds that double wall glasses existed when Bodum introduced its double wall glasses on the Canadian market in 2003/2004. Relevant prior art and the lines of industrial design 107,736 and Trudeau glasses TX-186 and TX-47 [ 60 ] Mr. Morand, the expert witness, indicated that internet research and an American patents database called USPTO [United States Patent and Trademark Office] (T7 – May 24) made it possible to show that there is relevant prior art for industrial design 107736 (Exhibit TX-1). Mr.

Morand explained to the Court that the differences between what can be found in the prior art and industrial design 107736 are minimal (T33 – May 24). The table illustrates the prior art relevant to industrial design 107736: Bodum Industrial Design Prior Art Image Image Image Image (Exhibit TX-97)

(1897) Image (Exhibit TX-106)

(2000) Industrial design No 107,736 (Exhibit TX-1)

(2003) Image Image (Exhibit TX-105)

(2001) Image Double-walled salt dish (Exhibit TX-168) (circa 1750-1800) [ 61 ] More specifically, Mr. Morand addressed the resemblances between the shape of the prior art designs and that of industrial design 107736. In cross-examination, Mr. Morand was not able to confirm whether the prior art designs had a double wall. However, that element is not determinative in this case because, even though the two industrial designs in question show an exterior line and an interior line with a space in between the two, nothing indicates that that space contains air, liquid or glass.

The description of the industrial designs in question is also silent on this point. The same can be said for certain prior art, including the design from 1897 (Exhibit TX-97). The lines of industrial design 107736 and Trudeau glass TX-186 [ 62 ] As illustrated below, the interior line and the exterior line of industrial design 107736 are completely convex, from the bottom to the top of the glass (Michel Morand, T19-20 – May 24). However, the interior line of Trudeau glass TX-186 is first convex, and then becomes concave.

The exterior wall of the Trudeau glass is completely convex, like that of industrial design 107736 (Michel Morand’s expert report, at paragraph 25): Image Image Industrial design No 107,736 (Exhibit TX-1) Trudeau glass (Exhibit TX-186) [ 63 ] Mr. Morand, the expert witness, opined that the proportions of industrial design 107736 and Trudeau glass TX-186 are not the same: [ translation ] And even if I tried to reduce the Trudeau glasses, I would never arrive at the shape at the top because I would not have the same proportions; I would not have the same, the same look.

But it must still be noted that the curves at the top of the industrial design, a prominent curve compared to the others which have—in the Trudeau glasses, I clearly have two curves in the interior with a point of tangency; that is very important to say. (T24 – May 24) The lines of industrial design 107736 and Trudeau glass TX-47 [ 64 ] Regarding industrial design 107736 and Trudeau glass TX-47, Mr. Morand noted that the interior walls of industrial design 107736 are completely convex, whereas the interior wall of Trudeau glass TX-47 is first convex, and then becomes concave at the top of the glass.

The exterior wall of Trudeau glass TX-47 is completely convex, but a lot less rounded than the exterior wall of industrial design 107736, as illustrated below (Michel Morand’s expert report, at paragraph 25): Image Image

Industrial design No 107,736 (Exhibit TX-1) Trudeau glass (Exhibit TX-47) Relevant prior art and the lines of industrial design 114070 and Trudeau glasses TX-186 and TX-4 [ 65 ] The prior art submitted into evidence in respect of industrial design 114070 (TX-214) are the following: Image Industrial design No 114,070 (Exhibit TX-214)

(2003) Image (Exhibit TX-97)

(1897) Image (Exhibit TX-13)

(1915) Image (Exhibit TX-21) (December 31, 1991) Image Coca-Cola glass (Exhibit TX-108) ( circa 1919) Image History of the glass (19th century) (Exhibit TX-166)

(1834) Image Assam No 4553-16 (Exhibit TX-219) (before 2003) [ 66 ] Mr. Morand also stated that the differences between what can be found in prior art and industrial design 11470 (Exhibit TX-214) are minimal (Michel Morand, T33 – May 24). He also opined that industrial design 114070 differs from Trudeau glasses TX-186 and TX-47 (T24–25 – May 24). The lines of industrial design 114070 and Trudeau glass TX-186 [ 67 ] Regarding industrial design 114070 and Trudeau glass TX-186, Mr. Morand explained that the lines also differ (Michel Morand’s expert report, at paragraph 26). [ 68 ] In that respect, Mr.

Morand explained that the exterior line of industrial design 114070 starts out concave and then becomes slightly convex towards the top whereas it is clear that the exterior line of Trudeau glass (TX-186) is convex. Regarding the interior lines of the Trudeau glass, they are first convex and then become concave, which is contrary to industrial design 114070, as illustrated below: Image Image Industrial design No 114,070 (Exhibit TX-214) Trudeau glass (Exhibit TX-186) The lines of industrial design 114070 and Trudeau glass TX-47 [ 69 ] Finally, with respect to industrial design 114070 and Trudeau glass TX-47, Mr.

Morand explained that the exterior wall and the interior wall of industrial design 114070 are concave at the bottom of the glass and become slightly convex at the top of the glass. However, the interior wall of Trudeau glass TX-47 has a completely opposite curvature, that is, convex at the bottom becoming concave at the top. Also, the exterior wall of Trudeau glass TX-47 is completely convex, which is not the case for industrial design 114070 (Michel Morand’s expert report, at paragraph 26), as illustrated below:

Image Image Industrial design No 114,070 (Exhibit TX-214) Trudeau glass (Exhibit TX-47) The legal test for comparison [ 70 ] Having shown the prior art, the Court now turns to the legal test applicable to the comparative analysis.

Section 11 [as am. by S.C. 1993, c. 44 , s. 164] of the Act defines infringement of an industrial design as follows: Using design without licence 11.

(1) 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 ; or … Substantial differences

(2) For the purposes of subsection (1), in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account. [Emphasis added.] [ 71 ] In this case, infringement will therefore occur if the Trudeau glasses do not differ substantially from the industrial designs in question, as specified in the following excerpt from the doctrine in the field: As previously set out, designs are registered in association with specifically identified articles. Infringement will occur when the design or a design not differing substantially therefrom has been applied to the article(

s) for which the design was registered. (John S. McKeown, Fox Canadian Law of Copyright and Industrial Designs , 3rd ed. (Toronto: Thomson/Carswell, 2000), at pages 837– 838). [ 72 ] The parties do not agree on the legal test the Court should apply for comparing the industrial designs in question and the Trudeau glasses and thus deciding whether infringement occurred. [ 73 ] The plaintiffs claim that the Court must decide the issue by carrying out an analysis the way the consumer would see it and by applying the three-pronged test developed in England and stated in Valor Heating Co. Ltd. v.

Main Gas Appliances Ltd. , [1972] F.S.R. 497 (Ch.D.), that refers to the doctrine of “imperfect recollection”. The plaintiffs also rely on the judgment of the Superior Court of Quebec in Industries Lumio (Canada) inc. c. Dusablon , 2007 QCCS 1204 , [2007] R.J.Q. 1216 ( Lumio ). The three-pronged test raised by the plaintiffs and reiterated in Lumio at paragraph 182 is as follows: [ translation ] (

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; (

c) Any change with respect to prior art must be substantial. [ 74 ] The defendant told the Court that the test should be carried out from the point of view of how the aware consumer would see things. The defendant also contended that the three-pronged test, which was developed in England and was applied before the amendment of the Act in 1993, is no longer applicable. [ 75 ] As noted by the defendant, a comparison of

section 11 of the Act before the amendment of 1993 and after the amendment of 1993 indeed shows that the pre-1993 version contained an element of “fraudulent imitation”, whereas that element was removed by the 1993 amendment and replaced by the concept of “design not differing substantially”: Before the 1993 Amendment Using design without leave 11. During the existence of an exclusive right, whether of the entire or partial use of a design, no person shall, without the licence in writing of the registered proprietor, or, if assigned, of the assignee of the proprietor, apply, for the purposes of sale, the design or a fraudulent imitation thereof to the ornamenting of any

article of manufacture or other

article to which an industrial design may be applied or attached, or publish, sell or expose for sale or use, any such

article to which the design or fraudulent imitation thereof has been applied. R.S., c. I-8, s. 11. [Emphasis added.]

Industrial Design Act , R.S.C., 1985, c. I-9,

section 11 (before the amendment of S.C. 1993, c. 44 , s. 164) (defendant’s book of additional authorities). After the 1993 Amendment Using design without licence 11.

(1) 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; or (

b) do, in relation to a kit, anything specified in paragraph (

a) that would constitute an infringement if done in relation to an

article assembled from the kit. Substantial differences

(2) For the purposes of subsection (1), in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account. Industrial Design Act , R.S.C., 1985, c. I-9,

section 11 (after the amendment of S.C. 1993, c. 44 , s. 164) (joint book of authorities, Tab 42). [ 76 ] Furthermore, even though the doctrine also seems to support the proposal that the test to determine whether infringement occurred has been different since the amendment (John S. McKeown, Fox Canadian Law of Copyright and Industrial Designs , 3rd ed. (Toronto: Thomson/Carswell, 2000), at page 838), without ruling on the issue, the Court indeed notes that the application of the three- pronged test may raise a certain number of questions with respect to its relevance, in light of the amendment of

section 11 of the Act in 1993. [ 77 ] During the hearing, a discussion took place concerning the use of the expression “aware consumer” and “informed consumer”. The Court notes that the French versions of certain Federal Court decisions on industrial designs, namely Bata , above, and Rothbury International Inc. v.

Canada (Minister of Industry) , 2004 FC 578 , [2005] 1 F.C.R. 130 ( Rothbury ), at paragraph 31 , use the French expression “ consommateur averti ” (aware consumer) to translate the English expression “informed consumer” ( consommateur informé ). [ 78 ] The question is thus the following: is there a difference between the expressions “aware consumer” and “informed consumer” for the purposes of this case? Le Petit Robert de la langue française , 2006, defines the term “ averti ” (aware) as follows: [ translation ] “having knowledge, conscious. = well-informed, not ignorant, concerned”.

It defines the term “ informé ” (informed) as follows: [ translation ] “With knowledge of the facts. = aware, knowledgeable, apprised of”. The Larousse French-English/English-French Dictionary defines “ averti ” (aware) as “Informed, experienced” and “Informed” as “ Au courant, renseigné ” (“Aware, apprised of”). [ 79 ] The

definitions quoted above show that the words “ averti ” (aware) and “ informé ” (informed) indeed mean the same thing and the Court is of the opinion that they can be considered synonyms of the English expression “informed consumer”. [ 80 ] In short, the issue of using the expression “aware consumer” or “informed consumer” is a false debate.

The Court is of the opinion that the alleged infringing product must be analysed by the Court from the point of view of how the informed consumer would see things, as specified by my colleague Justice Tremblay-Lamer in 2004 in Rothbury , above, at paragraph 31; see also Algonquin Mercantile Corporation v. Dart Industries Canada Ltd. (1984), 5 C.I.P.R. 134 (F.C.A.), at page 81; Sommer Allibert , above, at pages 624–625. Application in this case [ 81 ] Thus, after weighing the testimony of the expert witness, Mr.

Morand, and the parties’ arguments, 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. [ 82 ] Firstly, prior art clearly demonstrates that the lines of industrial design 107736 existed. More specifically, and the Court is in agreement with Mr. Morand, the design from 1897 has interior and exterior lines very similar to industrial design 107736. The design from 1897 has an interior line and therefore a double wall. That double wall may contain an air chamber, glass or liquid.

Exhibit TX-168 (double-walled salt dish) is also very similar if we disregard the base, which could be characterized as a variant. [ 83 ] Moreover, by comparing the proportions of industrial design 107736 and Trudeau glasses TX-186 and TX-47, the proportions differ namely with respect to the exterior curves and openings. Similarly, by comparing industrial design 114070 and Trudeau glasses TX-186 and TX-47, the fact is that the proportions differ once again as industrial design 114070 is designed according to an exterior concave curve that becomes convex.

However, the exterior line of the Trudeau glasses is completely convex. What is more, the evidence in the record demonstrates that the shape of industrial design 114070 existed in a prior Bodum Assam model (Exhibit TX-219, Assam No. 4553-16), the only real difference being that it had a handle (Exhibit D-1, “Defendant’s Discovery Read-Ins of Jörgen Bodum”, Tab 10, at pages 30 and 32).

Blue Bodum double wall glass TX-194 [ 84 ] In addition, the blue Bodum double wall glass TX-194 made in 1991 was the focus of the discussions during the trial. [ 85 ] The blue Bodum double wall glass TX-194 clearly shows that Bodum made double wall glasses before 2003/2004. The plaintiffs admit that colour is not protected by industrial design, but allege that there are differences between the blue Bodum double wall glass and the Trudeau glasses in question.

The plaintiffs’ arguments can be summarized as follows: [ translation ] - The Trudeau glasses are translucent, but the blue Bodum double wall glass is less so;

- The blue Bodum double wall glass does not seem to be a double wall glass; - The blue Bodum double wall glass contains two (2) pronounced rings at the top of the glass; - The bottom of the glass does not have the same shape as the Trudeau glasses. (Plan of argumentation of plaintiffs/defendants by counterclaim, at page 8.) [ 86 ] The defendant denies these differences and their relevance, if applicable. [ 87 ] In light of the evidence, the Court is of the opinion that the Trudeau glasses are a lot more similar to some pre-2003 glasses than to the industrial designs in question in this case.

The blue Bodum double wall glass TX-194 is an example of this. More specifically, as explained by the expert witness, Mr. Morand, the Court is in agreement with him that the Trudeau glasses have the same configuration as the blue Bodum double wall glass TX-194.

When compared, the Trudeau glasses and the blue Bodum double wall glass TX-194 have a convex exterior line and an interior line that becomes convex towards the top and those lines differ from the industrial designs, as illustrated below: Image Trudeau glass (Exhibit TX-186) Image Trudeau glass (Exhibit TX-47) Image (Exhibit TX-194) Image Industrial design No 107,736 (Exhibit TX-1) Image Industrial design No 114,070 (Exhibit TX-214) [ 88 ] The Court recalls that it is settled law that colour must be disregarded when assessing prior art.

With respect to the rings and the bottom of the blue Bodum double wall glass TX-194, they are not [ translation ] “obvious” and the Court is instead of the opinion that they have no impact on the visual aspect of the glass (Mr.

Morand, cross-examination, T53-55 – May 24). [ 89 ] As a result, the plaintiffs’ argument that it is the translucent double wall of the Trudeau glasses that makes them so similar to Bodum double wall glasses (opening statement of plaintiffs/defendants by counterclaim, at paragraph 5) must be rejected. [ 90 ] It follows that, 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. 2.

Invalidity [ 91 ] The Court recalls that the defendant, by counterclaim, argues the invalidity of the industrial designs in question whereas the

plaintiffs contend that the registration of those designs is valid. [92] First, it must be noted that industrial designs registered with the Office of the Commissioner of Patents of the CanadianIntellectual Property Office are protected for 10 years (section 10 [as am. by S.C. 1993, c. 44, s. 163] of the Act) and enjoy a prima faciepresumption of validity. Subsection 7(3) [as am. by S.C. 1992, c. 1, s. 143, Sch. VI, Item 16] of the Act states the following: 7. … Certificate tobe evidence ofcontents

(3) The certificate, in the absence of proof to the contrary, is sufficient evidence of the design, of the originality of thedesign, of the name of the proprietor, of the person named as proprietor being proprietor, of the commencement andterm of registration, and of compliance with this Act. [93] That presumption is, however, not irrebuttable. [94] As mentioned in paragraph 12, the first public disclosure of the Bodum glasses took place in August 2003 (Exhibit D-1,defendant’s discovery read-ins of Jörgen Bodum, Tab 5, at page 24, line 5). [95] As indicated at paragraphs 57–59, the prior art shows that double wall glasses existed before 2003.

In fact, the evidencedemonstrates that the existence of double wall glasses goes back as far as the 19th century (Michel Morand’s expert report, at paragraph22). The evidence also demonstrates that the pre-2003 glasses—including one prior art glass that goes back to 1897—had configurationsand proportions very similar to the industrial designs in question. [96] The courts have held that to be registrable, an industrial design must be substantially different from prior art. A simple variationis not sufficient.

The Supreme Court of Canada stated this principle in 1929—a principle that is still in effect today—in Clatworthy &Son Ltd. v. Dale Display Fixtures Ltd., (SCC), [1929] S.C.R. 429, at page 433. The Supreme Court of Canada remarkedthat opening the door to a simple variation would as a result paralyze the market: It must be remembered, however, that to constitute an original design there must be some substantial difference between the new designand what had theretofore existed. A slight change of outline or configuration, or an unsubstantial variation is not sufficient to enable theauthor to obtain registration.

If it were, the benefits which the Act was intended to secure would be to a great extent lost and industrywould be hampered, if not paralyzed…. [97] In 1985, in Bata, above, at page 347, Justice Reed pointed out that, to be registrable, the designs in question must showoriginality, that is, there needs to be a spark of inspiration. The Court adopts Justice Reed’s comments: This jurisprudence demands a higher degree of originality than is required with regard to copyright.

It seems to involve at least a spark ofinspiration on the part of the designer either in creating an entirely new design or in hitting upon a new use for an old one. [98] By comparing the prior art submitted into evidence and the industrial designs in question, by focussing on lines and by ignoringthe manufacturing processes, materials used and colours (Bata, above, at page 345), the Court finds that the designs do not varysubstantially. Even though Mr.

Perez, the President of Bodum USA, Inc., testified that the inspiration for industrial design 107736 (TX-1and Exhibit glass TX-198) came from a sake bowl that Jørgen Bodum apparently saw in Japan—Jørgen 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 existedfor a long time. They are articles used daily and, therefore, the difference must be marked and substantial (Le May v. Welch (1884), 28Ch.D. 24 (C.A.), at pages 34–35, cited in Bata, above, at page 348). On that point, the expert witness, Mr.

Morand, testified that[translation] “glasses have indeed existed for thousands of years and all shapes have already, for the most part, been explored in the sameway as shown by other prior art” (examination, Michel Morand, T29 – May 24). [99] For these reasons, the Court is of the opinion that the industrial designs in question do not meet the criteria defined by thejurisprudence entitling them to registration.

As a result, the industrial designs in question do not satisfy the requirement of subsdantialoriginality and, consequently, they are not entitled to the protection set out in the Act and must be expunged from the register. 3. Unfair competition [100] Regarding the allegations raised by the plaintiffs concerning unfair competition, they were made at the time of the writtensubmissions and were still part of the plaintiffs’ allegations during the opening statements.

Those allegations were, however, withdrawnat the pleading stage (plan of argumentation of plaintiffs/defendants by counterclaim, at page 11; T142-143 – May 29). The Court willtherefore not rule on the issue. VIII. Conclusion [101] In conclusion, the Court dismisses the plaintiffs’ infringement action and allows Trudeau’s counterclaim of invalidity.Consequently, the industrial designs in question must be expunged from the register. [102] Regarding costs, the parties will be given a deadline to try to resolve the issue themselves.

Prothonotary Morneau informed theCourt that he will remain available in that respect. [103] If the parties are unable to agree on costs, they can serve and file written submissions on costs by October 24, 2012. Thosesubmissions should not exceed 10 pages. Responses not exceeding 5 pages could be served and filed by October 31, 2012. [104] Finally, the Court reiterates its thanks to the parties’ counsel involved in this litigation for their professionalism, respect andcourtesy vis-à-vis each other and vis-à-vis the Court. POSTCRIPT

[ 105 ] These public reasons for judgment are unredacted from confidential reasons for judgment which were issued on September 26, 2012, pursuant to the Direction dated September 26, 2012. [ 106 ] The Court canvassed counsel for the parties whether they had concerns if the confidential reasons for judgment were issued to the public without redactions. On October 3, 2012, counsel for the plaintiffs and counsel for the defendant jointly advised that there were no portions of the confidential reasons for judgment that should be redacted but requested certain amendments.

The Court accepts the amendments requested by counsel for the plaintiffs and counsel for the defendant. The amendements have been incorporated in these public reasons for judgment. ANNEX Industrial Design Act , R.S.C., 1985, c. I-9 [ ss. 2 “utilitarian function” (as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 20), “variants” (as am. by S.C. 1993, c. 44 , s. 161), 7(1) (as am. by S.C. 1993, c. 15, s. 15)]

INTERPRETATION

Definitions 2. In this Act , … “design” or “industrial design” « dessin » “design” or “industrial design” means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye; … “utilitarian function” « fonction utilitaire » “utilitarian function”, in respect of an article, means a function other than merely serving as a substrate or carrier for artistic or literary matter; “variants” « variantes » “variants” means designs applied to the same

article or set and not differing substantially from one another.

PART I INDUSTRIAL DESIGNS Registration … Restriction on protection 5.1 No protection afforded by this Act shall extend to (

a) features applied to a useful

article that are dictated solely by a utilitarian function of the article; or (

b) any method or principle of manufacture or construction. Registration of design 6.

(1) The Minister shall register the design if the Minister finds that it is not identical with or does not so closely resemble any other design already registered as to be confounded therewith, and shall return to the proprietor thereof the drawing or photograph and description with the certificate required by this Part. … Certificate of registration 7.

(1) A certificate shall be signed by the Minister, the Commissioner of Patents or an officer, clerk or employee of the Commissioner’s office and shall state that the design has been registered in accordance with this Act . … Certificate to be evidence of contents

(3) The certificate, in the absence of proof to the contrary, is sufficient evidence of the design, of the originality of the design, of the name of the proprietor, of the person named as proprietor being proprietor, of the commencement and term of registration, and of compliance with this Act . … Exclusive right Exclusive right 9. An exclusive right for an industrial design may be acquired by registration of the design under this Part. Duration of right 10.

(1) Subject to subsection (3), the term limited for the duration of an exclusive right for an industrial design is ten years beginning on the date of registration of the design. …

Using design without licence 11.

(1) 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; or (

b) do, in relation to a kit, anything specified in paragraph (

a) that would constitute an infringement if done in relation to an

article assembled from the kit. Substantial differences

(2) For the purposes of subsection (1), in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account. … Action for Infringement … Defence 17.

(1) In any proceedings under

section 15, a court shall not award a remedy, other than an injunction, if the defendant establishes that, at the time of the act that is the subject of the proceedings, the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered. Exception (2) Subsection (1) does not apply if the plaintiff establishes that the capital letter “D” in a circle and the name, or the usual abbreviation of the name, of the proprietor of the design were marked on (

a) all, or substantially all, of the articles to which the registration pertains and that were distributed in Canada by or with the consent of the proprietor before the act complained of; or (

b) the labels or packaging associated with those articles. Proprietor

(3) For the purposes of subsection (2), the proprietor is the proprietor at the time the articles, labels or packaging were marked. Trade-marks Act , R.S.C., 1985, c. T-13 UNFAIR COMPETITION AND PROHIBITED MARKS Prohibitions 7. No person shall (

a) make a false or misleading statement tending to discredit the business, wares or services of a competitor; (

b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another; [1] TX-1 corresponds to Exhibit TX-198 (Pavina). [2] TX-214 corresponds to Exhibit TX-189 (Assam).