Imitation may be the sincerest form of flattery. Try it in the kitchenware business, though, and you might get a high-carbon steak knife between the eyes. The ability to defend a distinctive teapot or corkscrew is crucial for such companies. “They sell features that are pleasing to the eye,” says Chris Hunter, a partner and patent agent at law firm Norton Rose. “And if they can’t sell that, they don’t have a product.”
That helps explain Bodum’s beef with Montreal-based competitor Trudeau Corp. In 2003, Bodum unveiled a double-wall glass intended to insulate hot and cold beverages, inspired by a Japanese sake bowl once seen by company owner Jørgen Bodum, son of Bodum’s founder. It protected itself by registering industrial designs in Canada. In 2006, Trudeau began selling its own double-walled glasses. Bodum sued in Federal Court, claiming infringement.
This was no lark. Bodum has sued hundreds of competitors worldwide; last year it had at least 20 actions outstanding. “It has cost us a lot of money, but we have won 99% of the court cases,” Jørgen Bodum claimed several years ago. Bodum’s sparse website even features a section heralding legal triumphs. Jørgen Bodum was examined for this lawsuit, and Thomas Perez (president of its U.S. division) testified at trial—as did Robert Trudeau, the opponent’s chairman.
Industrial designs aren’t patents. “A design protects esthetic, visual features,” explains Hunter’s colleague, patent agent André Thériault. “It can be the shape of a drinking bottle or a pattern on wallpaper or carpet. A patent is more for protecting useful features and inventive concepts.” Dwelling on this distinction, the court peered hard into the glasses. Its September decision noted differences in the interior curves and proportions. Ignoring the air space (which it deemed purely functional) the court found Trudeau’s glasses “have almost none of the features” of Bodum’s. It also accepted evidence that double-wall vessels existed as early as the late 1700s—thus invalidating Bodum’s designs.
The decision is the first industrial design ruling in a generation, and Hunter and Thériault find its implications troubling. “I actually bought the Bodum glasses,” Hunter says. “When you put espresso in them, the liquid inside seems to float. This decision pretty much ignores the features that made me pay $16 a glass.”
Fighting perceived imitators also preoccupies Trudeau, whose 10-employee design team produce about 100 new products annually. The company resolves most disputes out of court, but still litigates occasionally, and has never lost a case. Bodum predicts that will change upon resolution of its recently filed appeal.