Industrial Design FAQ

Sections:

Basics of Industrial Design

Registering Your Industrial Design

Industrial Designs in Business

Industrial Designs in Different Jurisdictions

1. What is an industrial design?

   An industrial design (referred to as a design patent in the United States) is a form of intellectual property that protects visual features such as shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article. It may consist of two-dimensional features, such as a distinct coloring or pattern, or three-dimensional features.

2. How is an industrial design different from a patent?

   Unlike a patent, an industrial design does not create an entirely novel good or process, or a novel improvement on an existing good or process. Instead, it focuses on presenting a unique aesthetic change or design on an existing good or product, focusing on improving its aesthetic appeal to consumers. Further, protection offered by an industrial design does not relate to any functional aspects of a finished article, as would be covered under a patent. Canada’s Industrial Design Database includes industrial designs for articles ranging from chairs and coffee makers to shoes and mouthguards.

3. What can and cannot be protected by industrial designs?

   Aesthetic features such as patterns, ornaments and shapes of an object can be protected by an industrial design. Ideas, methods of construction, functions or materials cannot be protected through an industrial design – please refer to FAQs on other types of intellectual property to see if you may be eligible for such protections.

4. What rights does an industrial design confer?

   An industrial design owner has the exclusive right to exclude others from making, selling or importing articles embodying the description claimed by an industrial design registration. As such, an industrial design registration can be enforced when others copy or substantially copy the design.

5. Can something be protected by both copyright and an industrial design?

   Yes, there are many products which may benefit from both copyright and industrial design protection. Consider, for example, a board game. The design printed on the game board is likely subject to copyright, being an original, artistic (or artistic and literary) work. Simultaneously, the game board design, applied to the game board, may, if novel, be eligible for industrial design protection.

6. Is it possible to get design protection and a regular patent for the same product?

   Yes. An industrial design registration could be used to protect the aesthetic features, while a patent could offer protection for a product, or an improvement of a product, that is new, useful and inventive.
   
   For example, if you created a product with a unique design that has both aesthetic appeal and provides enhanced functionality, you could protect your aesthetic design with an industrial design and the functional improvements with a patent. A shoe is one example. The shoe may have a unique aesthetic design as well as an inventive shock absorption system – the unique look of the shoe might be protected by an industrial design while the shock absorption system built into it is protected by a patent.

1. Who can apply to register an industrial design?

   Only the proprietor (i.e., owner) of an industrial design or their agent, if applicable, may file an application for an industrial design registration. The proprietor is the creator of the industrial design unless he or she was hired to create it by another entity, in which case the other entity would be proprietor.

2. Is registration the only way to protect my industrial design?

   Simply put, yes. While in some countries, unregistered industrial designs are nonetheless entitled to a certain degree of protection, this is not the case in Canada. While aspects of an industrial design may, in some cases, be protectable by copyright or even trademark law, the protection an industrial design registration provides is unique. In order to wholly protect an industrial design in Canada it is important to register the same.

3. Is there a time limit to file an industrial design registration?

   Yes. In Canada, you must file an industrial design application as soon as possible to preserve the novelty requirement, and, if the design has been published or otherwise disclosed to the public, an industrial design application must be filed within 12 months of such disclosure.

4. How long does the process take?

   The process for obtaining an industrial design registration in Canada is generally expedited compared to that for the registration of trademarks or granting of patents. Once filed, an application typically receives a first examiner’s report (in the event that the application is not considered allowable as filed) or a notice of allowance within 12 months. The process may also be expedited by paying a fee and requesting advanced examination of the application. The fee for advanced examination, as of 2023, is $537.87 CAD.

5. What does the process entail?

   The process for registering an industrial design in Canada is broken down as follows:

   • Filing: The first step is to file a completed application. The application will depict and, optionally, describe the industrial design for which registration is sought, identify the applicant and the applicant’s address and, where applicable, indicate a priority claim – meaning a claim to an earlier filing date based on a corresponding application filed in one of a number of countries within 6 months of the Canadian filing. Once the application is received, all documents will be verified, and if they do not comply with the filing requirements, the applicant will receive an omission notice. If all documents are in order, the applicant will receive a notice of filing stating the filing date.
   • Examination: Next, the application is examined by the Canadian Intellectual Property Office (CIPO). CIPO will classify the design according to the Canadian Classification Standard for Industrial Designs, and subsequently, conduct a search of the prior art to determine if the applicant’s design is novel. If everything is in order, we will receive notification that the application is allowable. Otherwise, we will receive an examiner’s report indicating defects in or objections to the application. These objections may be, for example, that the industrial design is not novel, or may be based on the design being solely functional and thus not the proper subject matter of an industrial design application. If an examiner’s report is received, the applicant has 3 months to respond by amending the application or submitting arguments in an effort to persuade the examiner that the application should be allowed. A one-time extension of 6 months may be requested if additional time is needed. This extension should be requested before the deadline for the applicant to respond.
   • Registration: If and when the examiner is satisfied the applied-for design is registrable, it will proceed to registration. The applicant will receive notice of this fact and the design will be entered in the Register of Industrial Designs. Note that in some cases a design may be published even before registration. In some cases, the applicant may choose to delay the registration of their design. Delay up to 30 months from the filing date or from the priority date may be granted following a submission of a written request and payment of the requisite fee. Such cases, may include, for example, when the applicant is seeking industrial design protection in several countries, and where those countries do not allow the protection of a design that has been registered in another jurisdiction.

6. How long does registration last?

   A Canadian industrial design registration is protected for ten years from the registration date or fifteen years from the filing date, whichever periods ends later, with a maintenance fee payable by the five-year mark in order to keep the registration alive for the remainder of the 10- or 15-year period.

7. What documents and fees do I need to submit to register?

   You will need to submit an application form, photographs and/or drawings showing the design and a government filing fee of $430.30 CAD (as of 2023), plus an additional $10.75 CAD (as of 2023) for each page of drawings exceeding 10 pages. Optionally, a detailed description of the industrial design as applied to the article is also included in the application.

8. What are the essential requirements for the registration of a design?

   In order to be eligible for registration, your design must focus on an aesthetic feature of a product and be novel (unpublished or published earlier than twelve months before the filing of an application).

9. Do I have to register each design separately?

   Generally, yes. A registration generally protects a single design applied to a single article. However, in certain cases, an application may be filed for a single design and its variants, or a single design applied to multiple articles comprising a set. The best way to understand a “set” is to consider the combination of one or more spoons, forks and knives within a set of utensils. These items are of the same general character and are commonly sold together and intended to be used together. When filing for a design and variants thereof in a single application, the variants must be substantially similar to the first design and must be applied to the same article.

10. What is the maintenance procedure and how much are the maintenance costs?

    A maintenance fee must be paid to maintain the industrial design registration. In Canada, this government fee must be paid by the end of five years from the registration date and is currently $376.50 (as of 2023). If this deadline is missed, the maintenance fee may be paid up to six months after the deadline if accompanied by an additional late fee of $50 CAD (as of 2023). Paying the maintenance fee keeps the registration alive for the remainder of the 10- or 15-year period of registration.

11. Should I conduct a search for registered industrial designs before I file my registration?

    Yes. Conducting a search ensures that the design you are filing is original and has not been previously registered, which could result in the refusal of your application.

12. Should I use an intellectual property lawyer to help me conduct this search?

    In most cases, this is a good idea. An intellectual property lawyer can ensure that your search is thorough and covers all jurisdictions in which you plan to apply for industrial design protection. Further, an intellectual property lawyer will have the knowledge and experience to help you determine whether any similar designs may prevent your industrial design application from being allowed – it’s not enough for there to simply be no previously registered identical designs for the same article.

13. Can the registration of a design be cancelled?

    Yes. However, you will not be refunded any of the fees that you have paid if you cancel your registration.

14. Can I make an application for the same design again if the first application has been abandoned?

    Possibly, so long as the design still meets the novelty requirements.

1. What are the effects of publicizing your industrial design before filing an application?

   Publicizing your industrial design before filing for registration could lead to several issues. First, if you fail to file an application within twelve months of the original disclosure, you lose your right to file in Canada as your design is no longer considered new. Second, someone else could file your design before you, and, as Canada operates on a first-to-file system, you may lose your rights to register the design or have to enter into a costly and time-consuming battle to prove that you are the original creator.

2. How soon can one manufacture and sell articles made according to the design?

   It is best to apply for an industrial design registration before beginning to sell the item embodying the design to avoid disclosure issues that could prevent you from obtaining rights (see above), or failing that, within twelve months of the earlier of the first disclosure or sale of an article embodying the design.

3. Are registered designs made public?

   Yes. As an exchange for the exclusive rights conferred during the term of the registration, your design is published at the date of registration or 30 months from the earliest priority date, whichever comes first, and placed into public domain at the end of the term of your registration. This means that anyone will be at liberty to reproduce your design once the term of your registration is up. An industrial design, like a patent, offers a time-limited monopoly, and not exclusive rights in perpetuity.

4. How are industrial designs protected from infringement?

   If your Canadian industrial design registration is infringed upon by another party, you may initiate a civil action in court to enforce your rights. Remedies such as damages and/or an injunction may be ordered. The Canadian Intellectual Property Office (CIPO), however, is not responsible for enforcing lawful use of industrial designs. The office will neither look out for infringement of your design, nor do anything to enforce your rights. As the owner, you are responsible for monitoring and enforcing your rights in case of infringement.

5. What are the advantages to my business of protecting industrial designs?

   Registering your industrial design confers significant advantages to your business. For example, the right to exclude others from making, selling or importing articles embodying the design. This means that there is the opportunity for a substantial return on your investment in registering your design as competition is eliminated from the market in respect of the same or a substantially similar design. Enjoying these rights also means that you can price products embodying the design higher than you might in a competitive market, without the benefits conferred by intellectual property rights, in which anyone could reproduce the design and undercut your price.

6. How do I indicate that my product is protected by an industrial design?

   It’s a little-known fact that there is a marking for registered industrial designs in Canada, the same way there is a marking for copyright (i.e. ©). A circled “D” together with the name of the owner of the subject design is prescribed by the Industrial Design Act as a way to mark articles protected by industrial designs. The mark can be used on the articles themselves or included on the tags or packaging.

7. Do I have to mark my product?

   No, it’s not a legal requirement to give notice of your registered industrial design but it may one day serve you well. The Industrial Design Act dictates that, in the event of infringement of an industrial design where the defendant did not know (and had no reason to suspect) the industrial design was registered, the only available remedy to the owner of the design is an injunction – in other words, the defendant being ordered to stop infringing the design. That means no monetary award is available. A clear exception to this is, however, also provided in the Act. The limitation on available remedies does not apply if the subject article was marked as described above.

8. What happens if I don't protect my industrial design?

   Failing to protect your industrial design could have negative consequences for your business. You may be forced to compete with businesses who begin to start producing your design in the absence of any restrictions on doing so.

9. Is it possible to license or transfer ownership rights on a registered industrial design?

   Yes. You can license the rights granted by your industrial design registration, essentially permitting someone else to produce, manufacture, sell or import your design on certain terms and conditions. You can also assign the rights granted by your industrial design registration, such as in the case of a sale, and thereby completely or partially transfer ownership to another entity.

10. How do I request the recording of an assignment or licence?

    In order to record an assignment or licence affecting your industrial design application or registration, you must submit a written request to the Industrial Design office with the name and postal address of the assignee/licensee, as well as pay any required government fees (check the Canadian Intellectual Property Office (CIPO) fee schedule for industrial designs for more information).

1. Is a Canadian industrial design registration valid worldwide?

   No. Industrial designs, designs and design patents are valid only in the country or jurisdiction in which they are registered. However, it is now possible for Canadians to file an international design application under the Hague Agreement. For more information on such applications, see Industrial Design Applications Under the Hague Agreement.

2. How do you obtain an industrial design registration, registered design or design patent outside your home jurisdiction?

   In order to obtain an industrial design registration, design registration or design patent in another country, you must apply for such right with the intellectual property office of that country or jurisdiction. Certain jurisdictional offices allow you to secure design registrations in multiple countries via a single application (such as through the European Union Intellectual Property Office for a registered Community design for the European Union). Additionally, Canadians now benefit from the ability to file a single international application for protection in multiple jurisdictions (selected by the applicant) under the Hague System. For additional information on the Hague System, see our resource.

3. How do you protect an industrial design in the UK?

   Following the UK’s exit from the European Union, a Registered Community Design (RCD) in the EU no longer serves to protect that design in the UK. However, corresponding UK registrations were automatically created for any RCDs existing at the time of the UK’s separation from the EU. Applicants for industrial designs today will have to file two separate applications in order to obtain protection in both the EU and the UK. Applications for registration in the UK are directed to the Intellectual Property Office. Unlike in Canada, but similar to in the EU, industrial designs in the UK are protected whether or not they are registered. The nature and duration of the protection depends on the nature of the design. Registration in the UK is, however, nonetheless valuable as it may prolong the period of protection and obviate the need to meet certain requirements for unregistered design protection.

4. How do you claim priority to an earlier foreign application?

   Because Canada is a signatory to the Paris Convention for the Protection of Intellectual Property, industrial design applicants are entitled to convention priority, in other words, obtaining the benefit of an earlier priority filing date if the subsequent application is filed within six months of the earliest filing.
   
   For example, an application filed in Canada on January 1st, 2017 would take precedence over all applications filed in the United States between January 2nd, 2017 and July 1st, 2017 if its owner chose to apply for a design patent for the same design in the United States by July 1st, 2017 and made a priority claim back to the filing date of the Canadian industrial design application.

If you have any further questions, contact us to make a complimentary and confidential appointment with a member of our team.

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