Industrial Design Registration: Often Overlooked Protection against “Knock-Offs”
By: Alex Ross & Kojo Almasi
Many business lawyers will already be familiar with copyright, trademarks, and patents as effective forms of intellectual property (“IP”) protection under Canadian law. Although less well known, there is another form of IP protection that can be particularly effective against “knock-off” copies. It is called “industrial design” and it provides an additional form of IP protection. Industrial design is the “Yang” to the “Yin” of patents – whereas patents protect inventive functional features, industrial design protects innovative aesthetic features.
What is it?
Industrial design exists alongside patent, copyright, and trademark law to protect original intellectual property creations – specifically with relation to useful articles. Industrial design protects the “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye.” In other words, it protects the elements of a useful article that are neither utilitarian nor functional. Protection may apply to an entire article, or only part of an article. Examples include unique shape features of a container, the shape of a vehicle (or part of a vehicle) and even aspects of the display screen for a computerized user interface.
Rights and Remedies
A registered industrial design affords the owner protection against unauthorized use. Infringement of an industrial design occurs when a person makes, imports for the purpose of trade or business, sells, rents, or offers or exposes for sale or rent, any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied without the owner’s authorization. Remedies include damages or an injunction. The wide range of infringing acts provides a powerful enforcement tool not only against manufacturers of a copycat product, but also against those who import or sell it, and potentially even against advertisers. A cease-and-desist letter to retailers supported by an industrial design registration is often sufficient to foreclose the channels of trade for a “knock off” product. Actions for infringement must be brought within three years of the infringing act.
Benefits over Other Forms of IP
While copyright may often be effective protection for many creative works, this protection can be limited in some cases. This is particularly true when it comes to useful articles that are mass produced. Under the Copyright Act, if more than fifty such articles are produced, subject to certain exceptions, the design no longer falls within the ambit of copyright protection. Additionally, industrial design protection may be useful in cases where it is difficult to apply a trademark to a product or its packaging. For example, where candies are sold in bulk, there may not be a package at all and the candies may be too small to bear a legible trademark, but the shape of the candy, if it qualifies, can be protected by industrial design.
How to Get It
Unlike copyright and trademarks (which can be protected even absent registration, although there are significant drawbacks to an unregistered trademark as compared to a registered trademark) industrial designs must be registered in order to be protected. Applications for registration are made to the Canadian Intellectual Property Office (“CIPO”) and, if successful, will grant the registrant exclusive right to the design until the later of 15 years from filing and 10 years from registration, subject to payment of maintenance fees.
CIPO operates on a “first-to-file” basis, subject to international priority rights (discussed below). This means that it is generally the first person to file an industrial design, and not necessarily the first to design it, who will be granted the exclusive right. In practical terms, time is of the essence.
An application for an industrial design must contain each of the following:
- the name of the finished article in respect of which the design is to be registered;
- a representation (e.g., one or more drawings) of the design that complies with any prescribed requirements; and
any prescribed information or statement.
Registration will be granted once CIPO is satisfied that:
- the application was filed in accordance with the legislation;
- the design is novel;
- the design was created by the applicant or the applicant’s predecessor in title;
- the design does not consist only of features that are dictated solely by a utilitarian function of the finished article; and
- the design is not contrary to public morality or order.
Regarding point (b), the test for “novelty” is whether the design was disclosed “in such a manner that it became available to the public in Canada or elsewhere” before the application’s priority date, or in another Canadian application with an earlier priority date. In addition, Canada provides a one-year “grace period” whereby a public disclosure less than 12 months before the priority date by the applicant or the applicant’s predecessor in title (or someone who obtained knowledge of the design from the applicant or predecessor in title) will not undermine novelty. The priority date will be the filing date, except in the case of an application that was first filed in another country and then filed in Canada with a valid Paris Convention priority claim (see International Protection below).
Once the application is filed, it will either proceed to registration, or a CIPO Examiner may raise objections, and the applicant can generally make amendments to overcome those objections as long as they do not add new matter to the design.
Industrial design rights are national in scope, so a registration at CIPO only grants exclusive rights within Canada. Registering an industrial design internationally can extend its protection beyond Canada.
The Paris Convention provides a six-month period during which an application to register a design in a Paris Convention country may be filed in other Paris Convention countries. The application will effectively be treated as if it had been filed in the second country on the first date. Thus, where an applicant files for design registration in another Paris Convention country first, they can claim priority to that application when filing in Canada within six months. An applicant who files in Canada first can similarly claim priority in other Paris Convention countries. Although there are exceptions, the Paris Convention covers much of the industrial world.
Not only does the applicant have the option of applying for industrial design registration in individual countries, under the Hague System for the International Registration of Industrial Designs (the “Hague System”), it is possible to access protection across multiple jurisdictions with a single application, saving paperwork and costs. Under the Hague System, applications may be filed directly with the International Bureau of the World Intellectual Property Organization (“WIPO”), although they will still be examined by the local intellectual property office in each designated jurisdiction. The Hague System should be used with caution, because each jurisdiction has unique rules and if an applicant is not aware of those rules, the result may be that a Hague System application is found to be fatally flawed when examined in one or more individual countries or regions. It is strongly recommended to consult with local counsel in each designated jurisdiction before filing a Hague System application; in some cases, the best strategy may be to combine a Hague System application for some countries/regions with tailored individual applications in others.
Although industrial design protection can be exceedingly valuable, there are pitfalls for the unwary that can unduly narrow the scope of protection, or even preclude protection altogether. Therefore, it is strongly recommended to retain an experienced industrial design agent to file on your behalf. While there is no specific qualification or certification, many Registered Patent Agents also practice in the area of industrial design. A good agent can also help avoid objections that can delay registration.
Examination at CIPO can take up to two years or more, so to obtain as much protection as possible, as soon as possible, it is highly recommended that an application be filed with CIPO as soon as the proposed design has been finalized, well in advance of any disclosure or product launch (as some countries may not provide grace periods for disclosure by the applicant).
If you are looking for another way to protect the unique design of a useful article, consider filing an application to register an industrial design, which may offer an additional layer of protection against “knock-offs”.
1 Industrial Design Regula tions, SOR/2018-120, s. 14- 15 [Regulations].
2 Ibid at s. 11(1)(a).
3 Copyright Act, R.S.C., c. C-42, s. 64(3).
4 Ibid at s. 64(2).
5 Industrial Design Act, R.S.C., 1985, c. I-9, s. 10(1) (a) [Industrial Design Act]
6 Ibid at s. 4(1).
7 Ibid at s. 7.
8 Ibid at s. 8.2(1)(b).
9 Ibid at s. 8.2(1)(c).
10 Ibid at s. 8.2(1)(a).
11 Ibid at ss. 8, 8.1.
12 Government of Canada, “Industrial Design Office Practices” (1 June 2015), online: Government of Canada <https://www.ic.gc. ca/eic/site/cipointernet-internetopic.nsf/eng/wr00260.html#n3.4.1>.
13 Industrial Design Act, R.S.C., 1985, c. I-9, ss. 8, 8.1.