The Basics and Benefits of Industrial Design

What is an industrial design?

An industrial design registration is a form of intellectual property protection available to protect the unique appearance of a product. It is focused on protecting the visual features of an article, namely its design, shape, pattern or ornament, or any combination of two or more of those features.

For example, an industrial design registration could protect an original shape and configuration of shoes or a pattern of a tablecloth. In contrast, a change in the functionality of an article or in the materials used to manufacture an article are not aspects which are eligible for industrial design protection. For greater clarity, if the same shoes featured a new shock-absorption mechanism, the functionality of this aspect of their design wouldn’t be protectable by an industrial design, but may, if novel and inventive, be protectable by a patent. As such, different aspects of a single article (e.g., a shoe) may be protected by a combination of patents, industrial designs, trademarks (which protect the Nike swoosh thereon, for example), and even copyright (should they feature, for example, original art).

An industrial design is different from a patent, which aims to protect an improvement in functionality. If the innovation for which you are trying to obtain protection is rooted in improved functionality rather than an original visual appearance, you should consider filing a patent application if you believe that it meets the requirements for patentability. Similarly, industrial designs do not protect intangible things that are not visible to the eye.

Examples of industrial designs registered in Canada may be found in the Canadian Intellectual Property Office's Industrial Design Database. The database may be searched according to the article to which the registered design is applied, and includes articles ranging from chairs and beverage bottles to handbags and coffee machines. A database entry will typically include information about the owner of the design, the registration and filing dates, and include images of the design as applied to the relevant article.

Comparable rights to Canadian industrial design registration exist in other jurisdictions although under different names. The United States refers to the comparable intellectual property right as a United States design patent whereas the European Community calls their comparable right a Registered Community Design.

What benefits does an industrial design registration provide?

For business owners, an industrial design registration may be a valuable business asset. The success of a product is usually influenced by its appearance. In an aesthetic-driven consumer base, the looks of a fashionable product can often be equally or more important than its functionality. Consider whether you yourself have ever picked a more attractive product over a more functional product, and even paid more for it.

Obtaining exclusive rights to a product with a particular appearance may result in a substantial return on the investment because it will allow you to prevent others from reproducing a popular design. Exclusive rights mean only you can make your product with the protected appearance, and allow you to set your price without being undercut by your competitors.

An industrial design registration in Canada gives you exclusive rights to the commercial production, marketing and sale of your product with the protected appearance for ten years from the registration date or fifteen years from the filing date, whichever periods ends later. It also allows you to prevent your competitors from importing a product that copies or very closely resembles your design into Canada.

If your industrial design registration is infringed upon by a competitor using a design not differing substantially therefrom, you may bring your case to court and be awarded damages for the sales you have lost as a result of the infringement of your design registration. This allows you to focus on establishing products based on superior industrial design without worrying about knockoffs from competitors who can produce items cheaper or who can scale their manufacturing quicker.

An industrial design registration can also be sold or licensed to others. If you do not want or do not have the capability to produce the product protected by your industrial design, you may be able to sell or license your design to another and earn a royalty on their sales.

Further, the exclusivity in the market that your industrial design registration provides can help you establish goodwill in the trademark sense in a particular shape and appearance of the article, which is referred to as its get-up in trademark law. Having sufficient reputation in the get-up of a product becomes a separate ground for excluding others from copying your design.

The period of exclusivity provided by an industrial design registration allows your reputation in the particular design to build and then potentially provide those protectable trademark rights that can extend indefinitely if sufficient reputation in the get-up is maintained. Moreover, once the design has obtained sufficient acquired distinctiveness, it can even be registered in Canadian trademark law as a sign (e.g., the iconic Tic Tac box design).

Registering your industrial design in Canada

Mostly, protection of industrial designs (or elsewhere, designs or design patents) is only available in the country or region in which the owner has obtained a registration (n.b., the European Union gives a short three-year period of protection to Unregistered Community Designs as discussed further below). If you are looking to get protection outside of Canada, you will need to register separately with that country’s or region’s intellectual property office.

As Canada is part of the Paris Convention, Canadian applicants are entitled to a six-month convention priority period to file a corresponding application in other jurisdictions. What that means in practice is that, when you file in other countries within six months of your original filing date, the filing date of that application will be deemed to be the same as your filing date in Canada, putting you ahead (in terms of your entitlement to be granted the design registration or design patent) of similar applications from others in that jurisdiction who may have filed in the intervening period.

A search of existing industrial designs may be conducted prior to filing an industrial design application through the online industrial design database on the Canadian Intellectual Property Office (CIPO) website, or for broader coverage, the World Industrial Property Office (WIPO) Global Design Database. This can help you determine if your design, or something very close to your design, has already been registered by another.

Although CIPO and WIPO makes these databases available online, they will not help you determine whether your design is registrable in advance of filing an application. As such, you should consider hiring an intellectual property lawyer to determine if your design is registrable before filing an industrial design application.

If your design has already been publicly disclosed by you, you must file an application within twelve months of the earliest disclosure date to potentially obtain design protection in Canada.

As part of your application, you will be expected to provide clear and detailed drawings or photographs of your design from a number of views (typically front, back, left side, right side, top, bottom, and perspective) and a description of what constitutes the design as part of the application. The title of the application must also identify the article to which the industrial design is applied. With the assistance of an intellectual property lawyer experienced in industrial design protection, you will be able to prepare and file an application that seeks protection for the subset of a design's most aesthically valuable features, which is in effect a broader scope of protection than seeking protection for each and every feature of shape, configuration, pattern and ornament, together in combination.

Once issued, a Canadian industrial design registration is valid for ten years from the date of registration or fifteen years from the filing date, whichever periods ends later, if the maintenance fee which is due by five years from the registration date is paid. Visit this page to learn more about the Canadian industrial design application process.

Once registered, owners of industrial designs can, and are encouraged to, mark articles to which the designs are applied with an encircled letter “D” and their (the owner’s) name. This marking can be, and has been, the difference between recovering thousands of dollars in damages for infringement of a design and recovering nothing at all as the Canadian Industrial Design Act provides that a court shall not award a remedy, other than an injunction, if the defendant establishes that, at the time of the act that is the subject of the proceedings, the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered.

Registering your industrial design in other jurisdictions

One of the most common steps for Canadian industrial design owners is to also obtain design protection in the United States. In the U.S., the comparable right to an industrial design registration is referred to as a design patent, but the application process is otherwise similar to Canada.

You submit an application with drawings and a description of what constitutes your design to the United States Patent and Trademark Office. In the United States, a design patent will be valid for fifteen years from date of issue, with no maintenance fees required to maintain your design patent.

Design protections are country or region-based and in almost every other jurisdiction in the world, you will receive a six-month convention priority period under the Paris Convention that will allow you to file a corresponding application that will be treated as if it were filed there on the original filing date in Canada.

In 2018, Canada acceded to the Hague Agreement Concerning the International Registration of Industrial Designs (Hague System) making an international design application available to Canadian design applicants. The Hague System provides a mechanism for obtaining protection for your industrial design in multiple jurisdictions through the filing of one single international application and the payment of one set of fees. Please see our resouce on the Hague System for more information.

It’s worth noting that, unlike in Canada, in some countries a design is entitled to protection despite never having been registered. In the European Union (EU), for example, an unregistered community design is entitled to certain protections by virtue of having been publicly disclosed in the EU. Mind you, disclosure in the EU is a double-edged sword. While it gives birth to certain rights in the subject design, it also starts the clock. If the owner decides that they wish to benefit from the additional protection offered by a registered community design, they have only 12 months from the date of the disclosure of the design to apply for it.

Conclusion

Design registration can provide significant benefits to your business, including ownership of exclusive rights to manufacture and sale of the design. This will allow you to exclude competitors imitating you from the market as well as the potential to profitably sell or license your exclusive rights to your design to others.

If you believe that your industrial design is original and will be commercially valuable, industrial design registration is a worthwhile investment. To learn more about how to get an industrial design registration in Canada or how to get a design patent in the United States, contact us now for a complimentary and confidential initial telephone appointment with a member of our team.