Barristers and Solicitors
Patent and Trademark Agents

Industrial Designs: An often Overlooked but Versatile Monopoly

In this article, we will address an often overlooked form of intellectual property protection that is available to all types of businesses, namely, industrial designs. An industrial design can protect the ornamental appearance of many articles from chairs to air fresheners to screen displays for smart phones to fabric designs for underwear:

Illustrations of a chair, air freshener, cellphone, and wallpaper pattern

It is also possible to preserve exclusive rights in only a portion of a “useful article”, such as the tread patterns and decorative panels for shoes:

Illustration of shoes

The Industrial Design Act (the “IDA”) explicitly denies protection to features dictated solely by a utilitarian function of the article or any method or principle of manufacture or construction. Exclusive rights in the functional features of a useful article can only be protected as a trade secret or by a patent.

Timing, Term & Scope of Protection

The potential monopoly provided by industrial designs can be easily lost if action is not taken in a timely manner.  An industrial design can be refused registration if the application is filed more than 1 year after the publication of the design anywhere in the world. Publication means making the design publically available, which would include showing or selling articles which embody the design, publishing pictures of the articles, posting the designs to a website, etc.

Industrial design registrations are valid in Canada for a term of 10 years, subject to the payment of a maintenance fee due on the 5th anniversary of the registration.

The registration of an industrial design grants its owner the right to prevent others from making, importing, selling, and renting any article that does not differ substantially from the registered design.

Preparation

Industrial designs are quick and cost effective to register. Unlike patent applications, there is no need to provide detailed background information or specific legal claims in an industrial design application. The examination process is quite simple, and a registration can typically be issued within 1 year after filing of the application. 

Other Countries

Although sometimes referred to by different terms, protection for the visual appearance of useful articles is available in other many other countries. Notably, the USA grants similar protection to so-called “design patents”.

Relationship with Copyright

Copyright arises automatically in the design of a “useful article”, or in an artistic work, from which the design of an article is derived.  This means that an artist can design “useful articles” in small quantities and still maintain exclusive rights through copyright. However, once the scale of production reaches an industrial scale (more than 50 copies); the copyright can no longer be enforced.  Exclusive rights in the mass produced design can only be effectively protected through registration as an industrial design.

Relationship with Trademarks

Industrial designs can be used as a tactical step in the pursuit of trade-mark protection for product packaging as a so-called “distinguishing guise”. This can include unique designs for bottles, containers, foil wrappers and fanciful shapes for the goods themselves. Unlike an industrial design, exclusive rights in a trade-mark may be preserved indefinitely.

However, a “distinguishing guise” is only eligible for trade-mark protection in Canada after it has been used exclusively by one source in the marketplace for several years and its unique features have become recognized as an indicator of that source. And, as discussed above, the copyright in product packaging will become unenforceable after more than 50 copies are manufactured. As a result, there is a gap between copyright and trade-mark protection for product packaging that can be bridged with an industrial design for up to 10 years. By the time the industrial design registration nears its expiry date, the product packaging will have been in the marketplace long enough to have acquired the reputation upon which to base a trade-mark application.

Conclusion

When considering how to preserve exclusive rights in an innovative product, it is important not to overlook industrial designs. They can protect the visual impact of useful articles, help in build a strong branding presence for products, and extend protection for artistic works where production has expanded beyond the scope of copyright protection.

 

Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.