What is an Industrial Design?

An industrial design registration is a form of intellectual property protection that safeguards the unique visual features of a product, including its design, shape, pattern, or ornamentation. These visual characteristics distinguish the product in the marketplace, contributing to its appeal and commercial success. Industrial design protection is aimed at preserving the aesthetic aspects of an article, rather than its functional features.

For example, an industrial design registration could protect the shape and configuration of a pair of shoes or the intricate pattern of a tablecloth. However, changes in the functionality of an article or in the materials used to manufacture it are not eligible for industrial design protection. For instance, if those same shoes featured a new shock-absorption mechanism, that functional innovation would not be protected by an industrial design. Instead, it could potentially be covered by a patent, provided it meets the patentability criteria. This highlights the fact that different aspects of a single product can be protected through a combination of patents (for functionality), industrial designs (for visual appearance), trademarks (for brand identity, such as logos), and even copyright (for original art on the product).

An industrial design is distinct from a patent, which protects functional innovations. If the innovation you seek to protect is based on improved functionality rather than visual appearance, filing a patent application may be more appropriate. Industrial designs focus exclusively on what is visible to the eye, not intangible features like technical improvements or processes.

In Canada, industrial designs can be registered through the Canadian Intellectual Property Office (CIPO). The CIPO maintains an Industrial Design Database that allows the public to search for registered designs. This database includes products ranging from chairs and coffee machines to handbags and beverage bottles, and it provides information on the design owner, filing and registration dates, as well as images of the design as applied to the article.

Other countries have similar protections for industrial designs, though they may use different terms. In the United States, the comparable protection is called a design patent, while in the European Union, it is known as a Registered Community Design.

Benefits of Industrial Design Registration

Registering an industrial design offers significant advantages for business owners, particularly in industries where product aesthetics play a key role in consumer choices. Here are some of the main benefits:

• Exclusive Rights: A registered industrial design grants the owner exclusive rights to the commercial production, marketing, and sale of products featuring the protected design. These rights last for 10 years from the registration date or 15 years from the filing date (whichever is later) in Canada. This exclusivity gives the owner a competitive edge in the marketplace by preventing competitors from copying the design.
• Legal Protection: If a competitor uses a design that is substantially similar to your registered industrial design, you have the right to take legal action. This can result in damages for lost sales or an injunction to prevent further infringement. Without registration, protecting a design from unauthorized use can be much more difficult.
• Commercial Advantage: In consumer-driven markets, the appearance of a product can be as important, if not more important, than its functionality. An industrial design registration allows the owner to capitalize on the visual appeal of a product, giving them the ability to command premium prices and secure a larger market share.
• Licensing and Sale: Industrial design rights can be sold or licensed to others, offering an additional revenue stream for businesses. For instance, if a company doesn’t have the capacity to manufacture or market a product featuring their design, they can license the design to another company and earn royalties from sales.
• Goodwill and Brand Building: A product’s design can contribute to its overall brand identity, particularly if the design becomes iconic or widely recognized. As the design gains market recognition, it can help establish goodwill, which is valuable in trademark law. For example, the distinctive shape of a perfume bottle or the sleek design of a smartphone can become integral to a brand’s identity.
• Extended Protection through Trademarks: In some cases, once a product design has built enough reputation, it can also be protected under trademark law for its "get-up" (the overall look and feel of the product). If the design gains sufficient distinctiveness, it may even be registered as a trademark, which provides indefinite protection as long as the trademark is maintained.

Registering Your Industrial Design in Canada

To register an industrial design in Canada, you must file an application with the Canadian Intellectual Property Office (CIPO). Registration provides protection for the design in Canada, meaning that others cannot legally reproduce or sell products with that design without permission.

Steps for Registration:

1. Search for Existing Designs: Before filing, it is advisable to conduct a search of the CIPO’s Industrial Design Database or the World Intellectual Property Organization (WIPO) Global Design Database. This can help determine whether your design, or something very similar, has already been registered by someone else.
2. Filing the Application: The application process includes providing detailed drawings or photographs of the design, showing the product from multiple angles (e.g., front, back, sides, and top). You will also need to include a description of the design and specify the article to which the design is applied. Working with an intellectual property lawyer can help ensure that the application fully captures the protectable features of the design.
3. Timing of Disclosure: If you have already disclosed the design publicly, you must file the application within 12 months of the earliest disclosure to preserve your right to register the design.
4. Duration of Protection: Once registered, the industrial design is protected for 10 years from the date of registration or 15 years from the filing date, whichever comes later. A maintenance fee must be paid within five years of the registration date to keep the design in force for the full term.
5. Marking the Design: To strengthen the legal protection of the design, it’s recommended to mark the product with the encircled letter “D” and the name of the owner. This marking provides public notice of the design’s registered status and may prevent claims of innocent infringement in court.

Registering in Other Jurisdictions

Industrial design protections are generally country-specific, meaning that a Canadian registration will not protect your design in other countries. However, Canada is part of the Paris Convention, which allows Canadian applicants to file corresponding applications in other countries within six months of their original Canadian filing date and still benefit from the original filing date.

International Design Protection:

• Hague System: Canada’s participation in the Hague Agreement allows Canadian applicants to file a single international application for design protection in multiple jurisdictions. This simplifies the process and reduces costs for businesses seeking protection in multiple countries.
• Unregistered Community Design (EU): In the European Union, a design may benefit from limited protection (three years) without registration if it has been disclosed publicly in the EU. However, this disclosure also starts the clock for registering the design, which must be done within 12 months of the disclosure date to obtain full protection.

Conclusion

Registering an industrial design can offer substantial benefits to businesses, including exclusive rights to produce, market, and sell a product with a protected appearance. It also provides a legal framework to combat infringement and safeguard the company’s investment in the design. If your design has market potential and is original, obtaining industrial design protection can be a wise business move.

For assistance with registering your industrial design in Canada, or to explore design protection options in other countries, contact startupa2z.com for expert advice. We can guide you through the process and help you secure your intellectual property rights.