3D Printing: The New Industrial Revolution?

CanadaFashionLaw recently participated as a panelist at a fashion law symposium in Chicago.  Overall, the theme of the symposium examined technology’s role in fashion.  Specifically, CanadaFashionLaw discussed intellectual property implications for the fashion world in its incorporation of 3D printing and scanning technologies.

Whereas another panelist heralded 3D printing as creating a new world order in the global supply chain, CanadaFashionLaw took a more measured approach.  This is not to take anything away from the sheer impressive awesomeness of 3D printing but to some extent we’ve seen similar digitization movements before.  So, will there be a new world order?  Likely, not.  Will it impact the marketplace and provide more opportunities?  Likely, yes.  Let us explain.

3D printing is exactly what it sounds like.  The ability to print 3-dimensional objects from a printer.  Although this technology has been around for a number of decades, it has only recently caught the attention of the mass market.  The foundational patents that provided market exclusivity expired and now the technology is open to all to use.  As such, given that there is a proliferation of 3D printing and scanning companies (and also given that the technology has evolved to iron out the kinks), 3D printing is cheaper and more accessible.  Whereas 3D printing was restricted to large companies and used for prototyping, 3D printing has now gone to mass market.  This facilitates the democratization of manufacturing, whereby small companies and individuals can build their own products with relative ease.

Of course, this raises huge intellectual property concerns.  If you start to print objects that are the subject of patent, copyright and trademark protection, are you infringing intellectual property rights?  Where does the liability fall: with the individual printing the object or with the CAD-file provider or both?  Will the proliferation of counterfeit products become even more rampant?  How practical are enforcement attempts?  Should there be a distinction between private and commercial use?

There is no doubt that technology is a hare and law is the tortoise in terms of evolution.  However, there are lessons to be learned from previous technological developments that can be applied to this new development.  For example, similarities can be drawn from the digitization of the music industry.  Yes, the retail model of the music industry was altered by the proliferation of MP3’s but the foundation of copyright protection afforded to the music industry largely remained the same.  Applied simply to the 3D printing world, if you start printing 3D objects where a 3rd party owns intellectual property rights to that object, you are exposing yourself to risk.

If you want to chat more about 3D printing and its application to the fashion industry, feel free to reach out to CanadaFashionLaw or check out the Spreading the Word page for upcoming and past speaking engagements, published articles and journalistic commentary.

Glass Half Empty for Industrial Design Protection in Canada?

An interesting decision was recently issued by Canada’s Federal Court, which has sparked some interest in the intellectual property arena: Bodum USA, Inc. and PI Design AG v. Trudeau Corporation (1889) Inc.  The case focuses on industrial design infringement, a type of intellectual property that is rarely litigated in Canada.

What is an Industrial Design?

Before delving into the case, let’s get back to basics.  Industrial design is not as commonly known (or understood) as its intellectual property counterparts: patents, trade-marks or copyright.  Industrial designs seek to protect ornamentation on functional articles, specifically:

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

On the face of it, you would think that this type of protection would be extremely useful for consumer products and fashion designs and accessories.  Unfortunately, this case simply reiterates that industrial design protection is a more fickle type of protection in Canada. An examination of this decision will illustrate why.

Who Are the Players?

The Bodum brand was established in Denmarkin 1944 and is well known for its kitchen products. PI Design AG owns several industrial design registrations in Canadafor the shaping of glasses. PI Design AG licenses these industrial designs to Bodum USA Inc., who distributes the Bodum products in the US, Canada, Mexicoand South America.

Trudeau Corporation (1889) Inc. is a Quebec-based company that was founded in 1889.  It designs, imports, develops and markets kitchen products in Canadaand internationally.

What’s At Stake?

Bodum owns industrial design registrations for glassware in the following shapes:

These glasses were first made available in Canada towards the end of 2003 or the beginning of 2004.  The Canadian Intellectual Property Office issued industrial design registrations for these glasses on February 1, 2006.  No additional variations of the industrial designs were registered by Bodum.

Trudeau introduced its glasses to the Canadian market in the latter half of 2006:

Bodum did not take too kindly to the competing products and promptly commenced an action claiming industrial design infringement and unfair competition, which is contrary to the Trade-marks Act.  Unsurprisingly, Trudeau denied Bodum’s allegations.  Trudeau kicked it up a notch by seeking to invalidate Bodum’s industrial design registrations.

What are the Issues Before the Court?

The Federal Court was tasked with considering the following issues:

a)               Did Trudeau infringe Bodum’s industrial designs?

b)               Are Bodum’s industrial design registrations invalid?

c)               Does Trudeau’s marketing constitute unfair competition via an offence of confusion?

What was the Decision?

If you’re looking for a quick answer, here it is: Bodum lost out – there was no infringement or confusion. Trudeau reigned supreme – Bodum’s industrial design registrations were held to be invalid.

How Did the Court Reach that Decision?

It is important to understand some fundamental tenets of industrial design law in Canada:

  • Industrial designs protect visual features of an article.
  • Industrial designs do not protect functionality.
  • An industrial design can be registered if it satisfies the above criteria and does not closely resemble any other registered industrial design.
  • In order for there to be infringement, the articles must be substantially the same.

Trudeau called into action the only expert witness.  The expert had a degree in industrial design and was an industrial design consultant.  The expert came to the following conclusions:

  • Bodum’s glass shapes were not particularly unique.  There were minimal differences between Bodum’s glasses and others in the marketplace.
  • He did concede that the interior and exterior lines of the respective parties’ products were different.

The court recognized that there was a functional aspect to the double wall configuration of the glasses: the space between the walls helped to keep hot drinks warm and cold drinks cool.  Thus, Bodum was not granted a monopoly over all double wall glasses in Canada, but rather the look of the double wall glasses as identified in the industrial design registrations.

The major difference between Bodum and Trudeau’s glasses lay in the shaping of the interior line of the glass: Bodum’s glasses were convex whereas Trudeau’s glasses were at first convex and then became concave.  Both parties’ exterior line are convex.  Ultimately the court decided that the Trudeau glasses had “almost none of the features of the configuration of industrial designs in question”.

The court recognizes that industrial design registrations enjoy a prima facie presumption of validity – but this is a rebuttable presumption.  The court considered Bodum’s industrial design registrations in light of the prior art and held that they were not substantially different.  As such, the industrial designs did not meet the criteria for registration and, as such, the registrations will be expunged.

What Does This All Mean?

Let’s keep in mind that this may not be the end of it. This decision was at the trial level. Bodum may appeal this decision. We have yet to see. CanadaFashionLaw will keep you posted.

This decision confirms that relying on industrial designs as the only type of intellectual property protection is risky. It is best to try to augment industrial design protection with other types of intellectual property protection. Generally, industrial designs are known to be a a very narrow form of protection in Canada. However, in Canada we have seen intellectul property laws evolve with industry’s demands. For example, Metro-Goldwyn Meyer successfully struggled for Canadato recognize sound marks. Perhaps Canada needs a strong industry player to push the envelope through Canada’s judiciary to turn industrial design protection from a sleeping giant to an effective tool for businesses to protect their creative ingenuity.