Recent case law in Canada had precluded enforcement of an industrial design where features common between the design and the accused article included functional purposes. However, in its recent decision in Zero Spill Systems Inc v Heide (2015 FCA 115) the Federal Court of Appeal addressed this limitation on enforcement by holding that features of a design may be both functional/useful and aesthetic/visually appealing. Provided that a feature is not solely functional, it is eligible for protection and enforcement.

Background 

At trial (2013 FC 616), heard by Justice Barnes, the plaintiff asserted Canadian Industrial Design 86,793 (the 'Zero Spill design') related to a line pipe tray, as well as several patents. The purpose of the tray was to support oil drilling pipes when being disconnected and to capture any residual fluids from the pipe.

The defendant produced a similar line pipe tray whose design was acknowledged to have been based on the commercialised Zero Spill design.

In determining whether the defendant’s tray infringed on the Zero Spill design, the court considered whether the defendant’s tray copied visual features of the Zero Spill design. When considering the visual features, the court noted that Section 5.1(a) of the Industrial Design Act states that “[n]o protection afforded by this act shall extend to... features applied to a useful article that are dictated solely by a utilitarian function of the article”.

In comparing the design features of the two trays, the court found that any design features common to the Zero Spill tray and the defendant’s design were functional in nature. Further, the court noted that despite an admission that the designer of the defendant’s tray used the Zero Spill design as a model, “an attempt to imitate is not an infringement of an industrial design unless the imitator is trading on the aesthetic features of a competitor’s design”. Thus, the court found that there was no design infringement.

The court also determined that the defendant had not infringed the Zero Spill patents and that several of the patents in question were invalid on the grounds on obviousness and/or anticipation.

Appeal decision

On appeal, the Federal Court of Appeal took the opportunity to clarify procedural and substantive aspects of industrial design law.

At trial, the finding of non-infringement was based on a finding that features of the Zero Spill design were unprotectable pursuant to Section 5.1(a). On appeal, the court noted that the defendant had alleged only non-infringement of the Zero Spill design. Since there was no allegation of invalidity, the plaintiff was under no obligation to lead evidence that its design complied with Section 5.1(a) of the act. Thus, the lower court erred by requiring the plaintiff to lead evidence regarding compliance with Section 5.1(a) in an infringement analysis.

The appeal court also took issue with the way that Section 5.1(a) was interpreted at trial. It noted that only features whose form is dictated solely by function may not be protected, as Section 5.1(a) states that features “applied to a useful article that are dictated solely by a utilitarian function of the article” are ineligible for protection (emphasis in original). As a result, because “[f]eatures may be simultaneously useful and visually appealing”, functional features of designs may be protected under the act. Only those features whose form are dictated solely by function are not protected.

The court supported this interpretation with reference to the Copyright Act. Section 64(2) of the Copyright Act provides that more if than 50 copies of an article are made and the article is functional, no copyright protections apply. Citing Hughes on Copyright and Industrial Design and Copyright Legislation and Commentary, the court stated that the Industrial Design Act is to provide protection to fill the gap in the Copyright Act, and thus the act would serve no purpose if it did not protect functional features.

The lower court decision was set aside in part. The question of infringement of the Zero Spill design was remitted to the lower court for redetermination.

The finding of invalidity of two patents licensed by Zero Spill was also overturned, as there had been errors in construction and the assessment of validity at trial.

Comment

The decision of the Federal Court of Appeal in Zero Spill Systems Inc v Heide provides welcome clarification of the law for those seeking industrial design protection. The court clearly stated that industrial design protection can apply to features which are both functional and visually appealing, provided that the design is not purely functional.

Accordingly, given the relatively low cost and simple process for obtaining industrial design registrations, the significant remedies available (including injunctions and damages) in cases of infringement and the appeal court's confirmation that industrial design protection is broad in scope (ie, functional features are protectable provided that they are not solely functional), industrial design registrations for shapes, configurations, patterns, ornaments and combinations thereof as applied to articles are an attractive form of IP right.

In addition – and practically speaking for litigants – this decision sends a strong message to defendants that they bear the onus of alleging invalidity and burden of proof with respect to whether a design is directed solely at functional features contrary to Section 5.1(a) of the act.

Michael Crichton

Patrick Cashin

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.