Mock arbitration shines light on designs

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mock arbitration shines light on designs

An arbitration tribunal consisting of Dan Bereskin, Richard Kreindler and Richard Tan unanimously found that a design patent for a glass with a double wall was not infringed, following a mock proceeding at the AIPPI Congress in Toronto

The proceeding comprised some procedural questions, followed by opening statements by counsel for each party, evidence from two witnesses with direct evidence and cross-examination, witness conferencing (so-called hot tubbing) and closing arguments.

The audience of AIPPI attendees then witnessed a short deliberation between the panel. Bereskin said he relied on the evidence before his eyes rather than legal precedent: “My initial reaction is that the designs are not substantially the same. We would come close to giving the claimant a monopoly in liquid in a glass that appears to float. That is a functional feature and should not be protected.”

Tan added: “The bottom line is we need to determine whether there is substantial similarity or not. I would have thought not similar, so no infringement.” As they had found that there was no infringement, the panel was spared the challenge of deciding whether they had jurisdiction to rule on validity, something that the parties had strongly disputed.

The arbitration process was compressed into three hours, with strict time limits for each part. Nevertheless there were numerous noteworthy points raised, including an opposition to one of the arbitrators, a challenge to the testimony of one of the expert witnesses, and some vigorous cross-examination.

Much of the evidence centred on whether the design patents and the alleged-infringing products were similar in the eyes of an ordinary observer, and whether the double wall was a functional or ornamental feature.

Iván Poli and Mario Franzosi, who played the parts of the expert witnesses, provided entertaining testimony for the audience. Poli, witness for the claimant, said he had asked his ex-wife her opinion as she is a typical consumer: “She’s a very committed purchaser of things. She’s an authority.” Franzosi however said that, as a man, he was more interested in “what’s inside the glass”.

The facts of the dispute mirrored a real case, Bodum USA, Inc v Trudeau Corporation (1889) Inc, decided by Canada’s Federal Court in 2012. In that case Mr Justice Boivin also dismissed the infringement claim, and allowed the counter-claim of invalidity.

more from across site and SHARED ros bottom lb

More from across our site

The tie-up could result in the firm’s German and France-based teams, which both have strong UPC expertise, becoming independent
News of a slowdown in the UK’s clean energy IP landscape and an EPO report on unitary patent uptake were also among the top talking points
Price hikes at ‘big law’ firms are pushing some clients toward boutiques that offer predictable fees, specialised expertise, and a model built around prioritising IP
The Australian side, in particular, can benefit by capitalising on its independent status to bring in more work from Western countries while still working with its former Chinese partner
Koen Bijvank of Brinkhof and Johannes Heselberger of Bardehle Pagenberg discuss the Amgen v Sanofi case and why it will be cited frequently
View the official winners of the 2025 Social Impact EMEA Awards
King & Wood Mallesons will break into two entities, 14 years after a merger between a Chinese and an Australian firm created the combined outfit
Teams from Shakespeare Martineau and DWF will take centre stage in a dispute concerning the registrability of dairy terminology in plant-based products
Senem Kayahan, attorney and founder at PatentSe, discusses how she divides prosecution tasks, and reveals the importance of empathetic client advice
The association’s Australian group has filed a formal complaint against the choice of venue, citing Dubai as an unsafe environment for the LGBTQIA+ community
Gift this article