Background

Industrial designs consist of features of shape, configuration, pattern or ornament that give manufactured articles eye appeal. When different industrial designs are applied to similar articles, those articles may work identically, but they differ from each other in their appearance. Examples of designs can be seen in clothing and fashion accessories, in automobile bodies and interiors, in furniture, appliances, office equipment and essentially, in just about all types of manufactured goods. Industrial designs derive their value from making articles attractive.

While the subject matter of industrial designs is relatively straightforward, the legal issues that come into play in protecting new designs are among the most complex in the intellectual property field. Like other works of art, industrial designs are fundamentally expressions of style or form. However, designs that involve utilitarian articles must also incorporate functional considerations. Industrial designs are thus properly associated with copyright, but they tend to spill over into the subject area of patents as well.

Copyright prevents the unauthorized copying of an original artistic work, but copyright does not protect the concepts expressed in the work, only the specific manner of their expression. Patents, by contrast, can provide broader protection for new structural features in an article that give it functional advantages, but patent protection is only available for developments that meet the law's high standard of inventiveness.

The law therefore treats the products of intellectual creativity quite differently, depending on whether they are matters of form, or of function. The ultimate goal of modern design, however, is often to achieve a perfect marriage of form and function. The distinction between the two is in fact often blurred in successful industrial designs to the point where it can be difficult to recognize.

The competing policy considerations underlying the two dominant paradigms of copyright and patents lead to a number of special provisions in the law's treatment of industrial designs. Moreover, industrial designs can also present trade mark issues as well, since an article's appearance may often serve to distinguish it from similar articles available from other manufacturers.

In Canada, legal protection for industrial designs may be found through copyright, under the Industrial Design Act, and within the law of trade marks.

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The Industrial Design Act and The Copyright Act

To protect a design under the Industrial Design Act, the design has to be registered. An application to register the design must be filed within one year of its first publication. A design must be new to be registrable, and it must be sufficiently different from previously registered designs that it would not be confused with them. The maximum term of protection is ten years.

Wherever possible, it is usually desirable to rely on copyright to protect an industrial design, either in addition to obtaining an industrial design registration, or as an alternative. This is because copyright arises automatically, without any cost, and the term of protection lasts throughout the life of the author of the design plus an additional fifty years. Moreover, a design may qualify for copyright protection even if it is not novel or significantly different from earlier designs, as long as it was not copied.

Notwithstanding the advantages of copyright, registration under the Industrial Design Act nevertheless provides a primary means of protecting designs, because for many industrial designs copyright does not arise, or it is either lost or becomes unenforceable if articles comprising the design have been mass produced.

For designs created prior to a statutory amendment that came into force on June 8, 1988, copyright is not recognized at all in patterns for textiles, wallpaper, and so forth. For other designs created prior to the 1988 amendment, copyright is automatically lost once more than fifty articles embodying the design have been made.

For designs created after the 1988 amendment, a significantly modified set of rules apply. Copyright in such designs becomes unenforceable once more than fifty articles embodying the design have been made only if the articles have a utilitarian function. If they merely serve as a substrate for artistic matter, copyright continues to be enforceable regardless of the number of articles made. Copyright in such designs also remains enforceable where the design is one of certain specified types, for example, representations of a real or fictitious being, and graphic or photographic matter applied to the face of an article. Copyright is as well recognized in patterns for textiles and so forth created after the 1988 amendment.

Even where copyright is available to protect a design, the additional protection of an industrial design registration may offer some further advantages. One is that it provides an absolute right to exclude, and not merely the right to prevent copying. Thus, unlike copyright infringement, it is not necessary to show that an infringer of a registered design ever even saw it.

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Trade Mark Protection for Designs

Trade mark rights as well come into play in protecting industrial designs. However, these rights are dependant on establishing that the public associates the design with a single source of the product. Such a design can be protected under common law trade mark rights as part of the product's "get up", and may even be registered under the Trade-marks Act as a "distinguishing guise" provided that such a registration would not unreasonably limit the development of the relevant industry.

Trade mark rights also have advantages as a source of protecting industrial designs. For one thing, they have the potential to last indefinitely. Moreover, in certain cases, problems that can be encountered in enforcing copyright or design rights, such as establishing a chain of title, can sometimes be avoided by relying on trade mark rights.

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Summary

Protection of industrial designs can involve a consideration of a number of different areas of intellectual property law. This is true not only for Canada, but for many important foreign jurisdictions as well, including the U.S. Early consultation with legal counsel is the best course to follow to ensure that valuable design rights will be fully exploitable.

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Last Modified:Monday, July 4, 2005