Protection Of Functional Features Through Industrial Designs

In the decision of Zero Spill Systems Inc v Heide, 2015 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:

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 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...