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 five-partner team enhances Sheppard Mullin’s technology and life sciences capabilities, expanding its IP practice to more than 130 practitioners
In an exclusive interview, Rouse CEO Luke Minford, Arnold & Siedsma managing partner Steve Duxbury, and Wrays executive chairman Gary Cox discuss plans to build the world’s first ‘truly integrated’ global IP services business
Benjamin Grzimek, partner at Casalonga’s new Düsseldorf office, believes the firm is well-placed to challenge German UPC dominance
A lot of the reporting around the Anthropic settlement misses something critical: it isn’t that relevant to AI training, argues Rebecca Newman at Addleshaw Goddard
Justin Hill and Marie Jansson Heeks, part of an 18-strong team to have joined Crowell & Moring, explain why IP client advice must go beyond only being called upon for patent disclosure
To mark the EUIPO having processed five million EUTM and REUD applications, Managing IP speaks to the most prolific representatives to uncover how they stay at the top of their game
The merger marks Rouse’s second M&A deal within a month, and will provide access to Arnold & Siedsma’s UPC offering
Simon Tønners explains why IP provides the chance to work with some of the most passionate, risk-taking, and emotionally invested clients
The co-leaders of the firm’s new SEP practice group say the team will combine litigation and prosecution expertise to guide clients through cross-border challenges
Boasting four former Spruson & Ferguson leaders and with offices in Hong Kong and Singapore, the IP firm aims to provide fast, practical advice to clients
Gift this article