An introduction to design protection
What is an industrial design?
Often, the success of a product is driven by the unique or pleasing appearance of a product, rather than its functionality. The visual features that contribute to the appearance of a product can be legally protected by obtaining a registration for an “industrial design” (also known as a “design patent” in the United States or simply as a “design” in Europe).
In Canada, a registered industrial design is a legal document that gives the design owner, the right to exclude others from making, using, selling or importing any article, which includes the design elements set out in the design document. These exclusive rights, which are limited to Canada, can last up to 15 years from the date an application for the industrial design was filed. Industrial design rights can be sold or licensed to others. Similar design protection is available in other jurisdictions, including the United States and the European Union.
Why should you register your design?
An industrial design registration can provide cost-effective protection against competitors making direct copies of the product. By registering your innovative design(s), you can alert your competitors to your proprietary designs and discourage them from copying your products.
An industrial design registration—like other forms of intellectual property, including trademarks and patents—can be a valuable asset to your company and can be used to attract investments and business partnerships. As industrial design registrations can be sold or licensed to others, they may also be an additional revenue source for your company.
Industrial designs can complement other forms of intellectual property protection for your products. For example, by obtaining industrial design and patent protection, you can protect both the innovative aesthetic and functional features of your product, respectively. Your brand name and logos appearing on your product can be protected by obtaining trademark registrations. Further, you may be entitled to copyright protection for text and artwork appearing on your product packaging or marketing materials.
What can you protect with an industrial design?
A registered industrial design provides protection for the visual feature(s), as set out in the design document, which constitute the unique “look” of an article. This can include the three-dimensional appearance of the article, such as its shape and configuration and also two-dimensional visual features applied to the article, such as patterns, ornamentation, and colour. The registered design can be directed to the entirety of the article or to part of the article.
Industrial design protection is limited to the aesthetic features of an article. An industrial design does not provide protection for how an article works; the materials used in making the article or how the article is made. If you are also interested in obtaining legal protection for how your product works or is made, then you can also consider obtaining a patent.
How do you register an industrial design?
To obtain an industrial design registration in Canada, you must file an application with the Canadian Intellectual Property Office (CIPO) and pay the required government fees. Compared to other types of intellectual property, such as patents, an industrial design registration can be obtained relatively quickly and at lower cost. If the application is carefully drafted and the examination process straightforward, an industrial registration can often be obtained within 12-18 months of the filing date of the application.
Before making the time and financial commitments to pursue an industrial design in Canada and, especially if you will also be seeking design protection in multiple jurisdictions, it may be useful to conduct a prior art search to evaluate the novelty of your design. An experienced agent can assist you in reviewing the search results (e.g. published designs in Canada and elsewhere) and drafting your application to distinguish your design features over the prior art designs.
Once a decision has been made to pursue an industrial design registration, the first step is to draft an application, which will include drawings and/or photographs that illustrate the design elements for which protection is sought; a written description of the design; and other formal requirements. An experienced agent can assist you in preparing an application, which meets the necessary legal requirements, and which effectively protects the unique design features of your product.
Once the application is filed with CIPO and the required filing fees paid, an examiner will review your application to determine if the legal requirements for registering the industrial design are met. If the examiner determines that the application meets all the requirements, the industrial design will be approved and CIPO will the issue the registration document. However, if the examiner considers the application to be deficient, the examiner will write a report setting out the reasons why the industrial design cannot be registered. You can respond to the examiner’s report, within the required time, by making amendments to the application or by arguing against the examiner’s conclusions. The examiner will reconsider the application based on your response and will either allow registration of the design or issue another report if the examiner believes that the application still deficient. This process will continue until the application is either approved or refused. If the application is refused, the applicant has the option of abandoning the application or appealing the decision.
What are the legal requirements for obtaining an industrial design registration?
For an industrial design to be registerable, the design must consist of a feature or combination of features, that in a finished article, appeals to the eye (e.g. the features are aesthetic and visible). The design must not include features, the design of which, are solely dictated by the function of the finished article.
To be registrable, the design must also be novel. This means that the design, or a substantially similar design, has not been publicly disclosed anywhere in the world before the filing date of the application or in the case of an application claiming priority from an earlier filed application, before the priority date of the application. Examples of novelty-destroying public disclosures include publication of the design in print or electronic media, trade-shows, presentations, and press releases.
In the case of self-disclosures, if you, or a related party, have publicly disclosed a design, a 12 month grace period is available (starting from the disclosure date), during which you can still file an industrial design application for registration.
Who can apply to register an industrial design?
Only the “proprietor” of an industrial design can apply for an industrial design registration. The person who created the industrial design is considered the proprietor, unless that person was hired by another party to create the design, in which case, the other party would be the proprietor.
When should an industrial design application be filed?
In Canada, the industrial design regime is a first-to-file system. Regardless of when a design was created, CIPO will register the first application filed for the design. By being the first person to file an application for a design, you can prevent your competitors from obtaining a registration for the same or a substantially similar design.
A design must be novel, meaning that the design or a substantially similar design, has not been publicly disclosed in Canada or elsewhere. Ideally, an industrial application should be filed as soon as possible after the creation of the design (e.g. to be the “first-to-file”) and prior to any public disclosure of the design. However, if you have already publicly disclosed your design, your application must be filed within the 12 months of the public disclosure.
How long does an industrial design registration last?
The term of an industrial design registration is the later of 10 years from the registration date or 15 years from the filing date. To maintain your exclusive right to the registered design for the maximum term, you must pay a maintenance fee no later than five years after the registration date. It is possible pay the maintenance fee late, within 6 months of the payment due date, with the additional payment of a late fee.
How do you enforce your exclusive design rights?
Once registered, your industrial design can be asserted against infringers. It is up to you, with the assistance of legal counsel, to police and enforce your rights. Infringement generally occurs when a third party makes, uses, sells, or offers for sale a product having the same design as your registered design or a substantially similar design to your registered design.
If an industrial design is infringed, it is up to the design owner to enforce the industrial design in court. You can potentially obtain a number of remedies, such as compensation for your lost sales or a disgorgement of the infringer’s profits, injunctions against the continuation of the infringing activity, and delivery up or destruction of infringing articles.
How do you obtain design protection outside of Canada?
Obtaining an industrial design registration from CIPO only provides exclusive rights to the design in Canada. To obtain similar rights in other countries, you must seek design protection in each country. This can be accomplished by filing a design application and paying the requisite fee in each of the countries of interest.
If you have already filed a Canadian industrial design application, it is possible in many countries, to claim priority from the Canadian application (e.g. to benefit from the earlier filing date) if the foreign application is filed within 6 months of the Canadian filing date. Similarly, if the first filed application was a foreign application, any Canadian application would need to be filed within 6 months of the foreign filing date in order to claim priority from the foreign application.
As an alternative to filing a series of national applications, you can seek protection in multiple countries by filing a single international application with the World Intellectual Property Organization (WIPO) under the Hague International System, paying a single fee and designating each of the participating countries of interest. There are 70 countries participating in the Hague system, including Canada, the United States and the European Union.
Why file an industrial design application using the Hague system?
If you are interested in obtaining design protection in multiple countries, filing an international application under the Hague system allows you to prepare and file a single application with WIPO and pay the required fees in a single currency, thereby avoiding the necessity of coordinating multiple filings and payments in each country of interest. The Hague system also allows for streamlined maintenance of design rights in multiple countries through the payment of renewal fees directly to WIPO, rather than multiple local offices.
How do you obtain a registration under the Hague system?
To obtain a Hague registration, you or your agent must prepare and file a compliant international application and pay the required fees. The international application must include drawings and/or photographs illustrating the design(s) to be protected, a product indication in respect of which the design(s), a designation of the countries where protection is sought, and other formal requirements.
Once the application has been filed, WIPO will conduct a formality-based examination. Assuming the formal requirements are met, the design will be recorded in the International Register and published in the International Designs Bulletin. Following publication, the design is substantively examined by each of the designated countries to determine if the international application meets local legal requirements. If yes, the local office (such as CIPO) will communicate to WIPO that the design is registrable, and a Statement of Grant of Protection is issued. If the application is deficient, the local office will issue a Notification of Refusal, which WIPO will also communicate to the applicant. The applicant will have the opportunity to respond to the refusal with amendments and/or arguments.
How long does a Hague registration last?
A Hague registration is initially valid for 5 years from the international registration date. The term of the registration can be extended up to the maximum term permitted by each designated country. In the case of Canada, the term can be extended to a maximum of 15 years by paying the required renewal fee to WIPO and filing a renewal request within 5 years of the international registration date and subsequently, filing further renewal request (no renewal fee) within 10 years of the international registration date.