Protection of functional features through industrial designs
November 4, 2015

by Kevin Graham and Christine Genge

In the decision of Zero Spill Systems Inc v Heide2015 FCA 115, the Federal Court of Appeal has clarified the scope of industrial design protection for functional features of a useful article. 

The plaintiffs (collectively “Zero Spill”) sued several defendants for infringement of two patents as well as Industrial Design No. 86793 (the “793 Design”) relating to a fluid containment tray used in oil field operations. 

The allegations of infringement of the 793 Design were dismissed by the Federal Court.  In rendering his decision, Justice Barnes examined whether the defendants’ allegedly infringing tray (the “CAPP tray”) incorporated the visual features of the design covered by the 793 Design.  Although he was of the view that there was “no doubt” that the CAPP tray “bears a close resemblance to the 793 Design”, Justice Barnes nevertheless concluded that Zero Spill had not met its burden of proving infringement.  In reaching this conclusion, Justice Barnes relied upon paragraph 5.1(a) of the Industrial Design Act (the “Act”) which provides that industrial design protection does not extend to “features applied to a useful article that are dictated solely by a utilitarian function of the article.”  Justice Barnes held that since there was no evidence before him that the design features that were in common between the CAPP tray and the 793 Design were anything other than functional, the CAPP tray did not infringe the 793 Design.

On appeal, Zero Spill argued that Justice Barnes had erred in two respects, namely:

  1. Zero Spill did not have a burden under paragraph 5.1(a) of the Act, but rather the burden was on the defendants to show that paragraph 5.1(a) applied to features of the 793 Design; and
  2. paragraph 5.1(a) of the Act excludes from protection only those features whose form is dictated solely by their function, not features which may have some coincident function.

In terms of the burden under paragraph 5.1(a), the Federal Court of Appeal found that if the certificate of registration for the industrial design is in evidence before the Court, subsection 7(3) of the Act creates a blanket presumption that the registration is in compliance with the entire Act, which placed the burden on the party resisting the infringement claim.  As a result, the Federal Court of Appeal held that the defendants had the burden to invoke paragraph 5.1(a).  Since the defendants had not pled that any of the features of the 793 Design were dictated solely by function, or adduced evidence to prove it, the Federal Court of Appeal concluded that Justice Barnes’ finding of non-infringement of the 793 Design could not stand. 

With respect to the scope of paragraph 5.1(a), the Federal Court of Appeal held that the ordinary meaning of that provision as well as the purpose underlying the Act confirmed that “functional features of designs may be protectable under the Act” and “[o]nly those features whose form are dictated solely by function are not protected”. 

Overall, the Federal Court of Appeal remanded the issue of infringement of the 793 Design back to the Federal Court for redetermination. 

The Federal Court of Appeal’s decision is a useful reminder that industrial design protection for the visual features of a useful article is broad in scope and can extend to functional features of the article provided those features are not dictated solely by function.  Given the simple procedure and relative low cost of obtaining an industrial design registration in Canada, this form of intellectual property can provide a valuable and cost effective way of protecting the shape, configuration, pattern, and/or ornament of a useful article.

Note: An application for leave to appeal the Federal Court of Appeal’s decision to the Supreme Court of Canada has been filed.  However, the leave application does not extend to the Federal Court of Appeal’s decision on the industrial design issues.

For further information regarding this topic, please contact a member of our firm’s Industrial Designs group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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