What, exactly, does industrial design protect? The recent
decision Zero Spill Systems Inc. v.
Heide, 2015 FCA 115, reviewed this question. In
the trial level decision, Zero Spill sued a competitor for
infringement of Canadian Industrial Design No. 86,793 (the '793
Design), based on the competitor's sales of a similar-looking
tray. The '793 Design protected a fluid containment tray for
use in oil field operations. The Federal Court decided that there
was no infringement because many features of the '793 Design
were in some way functional, and were therefore unprotectable under
the Industrial Design Act by virtue of section 5.1(a) of
the Act. The court of appeal reversed in part and clarified:
1. First, the Court made it clear that the right to sue for
industrial design infringement depends on registration. Without a
registered industrial design, there can be no basis for
infringement. With a registered design, the law recognizes a
presumption of validity. In other words, a presumption that the
registered industrial design complies with the Act.
2. Secondly, it is worth noting that this presumption favours
the owner, and places the onus on the alleged infringer to plead
invalidity. If invalidity is not raised in the defence, and
evidence is not raised on the issue of invalidity, then the court
cannot make a determination of invalidity.
3. Third, the Court said clearly that "functional
features of an industrial design may be protected by the
Industrial Design Act." Looking at section
5.1(a) of the Act, it is clear that features that are dictated
solely by a utilitarian function of the article
are ineligible for protection. Therefore, "features may be
simultaneously useful and visually appealing." The Court went
so far as to say that Industrial Design Act would serve no
purpose if it did not protect functional features. Only those
features whose form are dictated solely by function are not
Talk to experienced IP counsel at Field Law for advice on
exploring the possible advantages of industrial design protection
for your products.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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