The Basics and Benefits of Industrial Design
What is an industrial design?An industrial design (or design patent) is a form of intellectual property protection available for design innovators in Canada, the United States and other jurisdictions across the world. It is focused on protecting the visual features of an article, namely its design, shape, pattern or ornament.
For example, an industrial design could protect an original design or shape of shoes. 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.
An industrial design is different from a patent, which aims to protect an improvement in functionality. If the innovation you are trying to obtain protection for is rooted in improved functionality rather than 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 goods that are not visible to the eye.
Examples of industrial designs may be found in the Canadian Intellectual Property Office's Industrial Design Database.
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 looks can often be equally or more important than its functionality.
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.
An industrial design registration in Canada gives you exclusive rights to the commercial production, marketing and sale of your product for ten years. It also prevents your competitors from importing a product that copies or very closely resembles your design into Canada.
If your industrial design is infringed upon, you may bring your case to court and be awarded damages for the lost sales you have incurred as a result of the infringement of your design registration. This allows you to focus on establishing products on the basis of superior industrial design without worrying about knock-offs 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, your industrial design registration can help you establish goodwill in the trademark sense in 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 design to build and then potentially provide those protectable trademark rights that can extend indefinitely as long as sufficient reputation in the get-up is maintained.
Registering your industrial design in Canada
Just like other types of intellectual property, industrial designs (or elsewhere, designs) are only valid in the country in which the owner has obtained a registration. 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 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. This can help you determine if your design has already been registered by another.
Although CIPO makes this database 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 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.
Once issued, a Canadian industrial design registration is valid for ten years from the date of registration, assuming that the maintenance fee which is due by five years from the registration date is paid.
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., an industrial design is referred to as a design patent, but the application process is otherwise generally similar to Canada.
You submit an application with drawings and a description of what constitutes your design with 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 as of the original filing date in Canada.
Canada is not yet a member of the Hague System so filing an international design application is not available to Canadian design applicants. Canadian applicants can however file a single application with the European Union Intellectual Property Office to obtain protection in all 28 member states of the European Union.
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 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 has commercial potential, industrial design registration is a worthwhile investment. If you would like to learn more about how to get an industrial design registration in Canada or how to get a design patent in the United States, please do not hesitate to contact us for a complimentary and confidential telephone appointment.