Industrial Designs

Industrial design is a form of intellectual property that protects unique and distinctive visual design elements or ornamental aspects of a product rather than its functional or technical features. Industrial design may encompass elements such as shape, configuration, pattern, ornamentation, or a combination of these elements.

Industrial design protection can apply to a wide range of products, including consumer goods, furniture, packaging, automotive designs, electronic devices, and more. Some examples of industrial designs are:

• the unique shape of the Coca-Cola bottle
• the shape of the Lamborghini car
• the pattern of a knitted sweater
• the shape of a cell phone device

In Canada, when you register your industrial design, you gain exclusive, legally enforceable rights for up to 15 years. You may sell your rights or license others to make, use and sell your design.

Legal Protection: Registration grants you exclusive rights to your design. This means you can prevent others from making, using, selling, or importing products that incorporate your design or substantially similar design without your permission. This protection helps to safeguard your investment in design and ensures that you can capitalize on your creative efforts.

Deterrence of Copying: By registering your design, you deter potential infringers. Knowing that a design is registered and protected can discourage competitors from copying it, helping you maintain your market position.

Enforcement: With a registered design, you have a stronger position to enforce your rights in case of infringement. If someone copies your design, you can take legal action to stop them and seek damages. Unregistered designs might be more difficult to enforce legally.

Competitive Advantage: A registered design can give you a significant edge in the marketplace. It differentiates your product from competitors, enhancing its attractiveness and adding value. A unique, well-protected design can be a key selling point and a marketing tool.

Monetary Benefits: Registration can lead to financial benefits through licensing or selling the design rights. You can generate revenue by allowing others to use your design under agreed terms or by selling the rights altogether. This can be particularly valuable if your design becomes widely popular or in demand.

Asset Value: Registered designs can be considered intangible assets and add value to your company. They can increase your business’s overall worth, which can be advantageous for securing investments or in the event of a sale or merger.

Professional Image: Holding registered designs enhances your reputation as an innovator and professional in your field. It demonstrates that you are serious about protecting your intellectual property and adds credibility to your business or personal brand.

Yes, you can file an industrial design application yourself in Canada. However, it is highly recommended that you seek the advice of a registered patent agent due to the complexity and nuances of the process for registration of an industrial design. A registered patent agent can help, among other things, reduce the chance that your application will be refused by the examiner and ultimately save you time and money.

The 1-year grace period refers to the time frame within which an industrial design can still be eligible for protection, even if it has been disclosed by the inventor/Applicant to the public prior to filing the application. In other words, if you disclose your industrial design, you must file an application to register it within 12 months of the first public disclosure to benefit from the grace period. If you wait longer than 12 months, you lose the right to register the design. The grace period allows for a design to be disclosed publicly (e.g., selling the product that contains the design, displaying the design at tradeshows & exhibitions, publishing images or descriptions of the product/design) without losing the ability to seek protection.

Example: Imagine you have created a new and innovative chair design. You decided to showcase it at a major furniture tradeshow to gauge interest and secure potential buyers. The tradeshow took place on January 1, 2024. According to the grace period provision, you have until January 1, 2025, to file an industrial design application in Canada to protect your chair design. If you file the application within this period, your public disclosure at the tradeshow will not affect your ability to obtain design protection.

Purpose of the 1-year grace period: The grace period is intended to give designers flexibility and time to test their designs in the market or to seek potential buyers or partners without immediately losing their IP rights. It helps in situations where designers need to showcase their products to gauge the interest and success of the design before deciding to seek formal protection.

Global Considerations: While the 1-year grace period is available in Canada, not all countries offer the same provision. Businesses should be aware of the rules in other jurisdictions where they might want to seek protection and ensure that public disclosure does not jeopardize their ability to register the design elsewhere. This is why consulting a registered patent agent is important, as they would be able to guide you with regard to public disclosure in Canada and other countries.

Filing and prosecution of an industrial design application refers to the process of seeking and obtaining registration of an industrial design with a government intellectual property office, such as the Canadian Intellectual Property Office (CIPO). This process involves several steps: filing the application, examination of the application, registration, and renewal. Throughout the prosecution process, the applicant, normally using a registered patent agent, may need to communicate with the CIPO to provide additional information and sometimes to amend the application in order to address any issues that may arise during the examination phase. The goal of prosecution is to achieve successful registration and protection of the industrial design.

During the examination phase of your industrial design application, an examiner from the Canadian Intellectual Property Office (CIPO) will examine your application in view of the requirements set out by the CIPO and may find some issues with your application, at which point, the examiner would issue a report detailing his concerns. This report is called an “Office Action”. The applicant, normally using a registered patent agent, must respond to these office actions, addressing the concerns raised by the examiner by a specific deadline. It is possible to receive more than one office action on the same industrial design application.

Industrial Design rights are exclusive to each jurisdiction. As a result, you should apply for your Industrial Design in each country (jurisdiction) where you plan to sell your products.

In Canada, the Industrial Design registration process currently takes 1.5 – 2.5 years.

If you are looking to protect your industrial design in multiple countries and to avoid submitting individual applications in each country of interest, the Hague System for the International Registration of Industrial Designs provides an option to file a single international application (Hague application) with the International Bureau (IB) of World Intellectual Property Organization (WIPO) and then designate countries that you would like to file your industrial design in.

The IB of WIPO then verifies compliance with formality requirements only, without any examination of the novelty of the design. A Hague application that complies with the formality requirements is recorded in the International Register and is published in the International Design Bulletin. The application is then transferred to each country identified in your application to undergo a substantial examination under its domestic law. At this point, you would normally need to appoint a patent agent to handle the local examination of your design in each country.