Imperial Manufacturing Group Inc v Decor Grates Incorporated, 2015 FCA 100
In an industrial design infringement proceeding the Federal Court of Appeal (FCA) upheld the rejection of a motion for particulars which had been sought to help the appellants plead a defence against the infringement claim. The appellants, Imperial Manufacturing Group Inc. and Home Depot Canada Inc. (Home Depot), had their motion dismissed in the Federal Court principally because the judge considered the request for particulars to be an improper “fishing expedition” to seek out possible defences.  This ruling was upheld.
The industrial design infringement claim was in respect of two designs for floor heating grates owned by the respondent, Decor Grates Incorporated (Decor).  Having obtained a certificate, subsection 7(3) of the Industrial Design Act creates a rebuttable presumption that, among other things, Decor is the proprietor of the design.  The two defences that the appellants sought particulars to help establish were (1) that Décor is not a proprietor of the design, and (2) that the registration might have been filed more than one year after the design was published. 
The FCA thought that this basis on which to ask for particulars was more akin to what can be asked for on discovery, not to complete pleadings. The appellants asked for particulars “to appreciate the facts on which the case is founded and better understand [Decor’s] position” and to improve the “structure and tone” of its defence,  not because it needed material facts needed in order to plead.  As a result, the appellants’ request for particulars was denied primarily as it amounted to a “fishing expedition” to seek out possible defences,  and was also denied because the particulars asked for went beyond what was relevant to make out the defences, [11-12] and, in any event, were already in the possession of Home Depot. 
Essentially, faced with the rebuttable presumption that Decor was the proprietor, it was on the plaintiff to adduce evidence to the contrary, not to fish for the supporting facts from Decor during pleadings. Under the circumstances, the judge did not err when it rejected the appellant’s request as a mere fishing expedition, and did not err on any other basis. [38-39]
Doing away with the appellants attempt to apply an “insufficient weight to relevant factors” standard of review pursuant to David Bull Laboratories (Canada) Inc. v. Pharmacia Inc.,  FCJ No 1629, [14, 20-28] the FCA applied the more broadly accepted “palpable and overriding error” standard of review,  and dismissed the appeal. 
This decision serves as guidance to any industrial design holder, or to any person at risk of infringing an industrial design, who find themselves in the position of seeking to prove or disprove one of the rebuttable presumptions made by subsection 7(3) of the Industrial Design Act. If a potential infringer is seeking to rebut one of these presumptions to make out a defence, the onus is on the defending party to produce the rebutting evidence on its own. Or, at least, such evidence will be difficult to obtain by moving for particulars during pleadings.