Industrial Design

1. Introduction

In the context of Canadian intellectual property law, the terms "design" and "industrial design" refer to visual features that give a manufactured article a specific appearance. The specific features mentioned in the statutory definition of a design are shape, configuration, pattern, and ornament. Most manufactured goods display at least some design features, and in many fields, designs play a critical role in whether a product is commercially successful or not. Examples include clothing and fashion accessories, automobiles, home furnishings and house wares, as well as many forms of packaging, such as perfume bottles. Designs derive their value from making manufactured articles appear attractive or distinctive.

Designs are fundamentally visual works of art, and one might therefore expect industrial designers to be entitled to claim copyright protection for their creations just as other artists can. However, for certain designs applied to utilitarian articles, copyright provides little or no protection. Implicitly, the legislative rationale is that the extensive term of copyright would undesirably interfere with competition in the development and supply of utilitarian products. Therefore, an alternative, less enduring form of legal protection has been provided for designs in the Industrial Design Act.

In many cases protection for industrial designs may nonetheless still be found through copyright. In some situations, moreover, protection for designs can also be found within the law of trademarks. It is therefore important to understand the advantages and limitations of all forms of design protection.

2. Protection under the Industrial Design Act

Specific legal protection for designs in Canada is provided in the Industrial Design Act and the Industrial Design Regulations. The statute establishes a registration system that includes a substantive examination of design applications. An application to register a design must be filed within one year of its first publication anywhere in the world. The design must be novel to be registrable, and it must be original and sufficiently different from previous designs that it would not be confused with them. Registration gives the design owner the exclusive right to use the design for a term of up to ten years.

Most other countries also provide a special form of legal protection for industrial designs, though in many cases the term of protection is significantly longer. In many countries, the protection is obtained through a registration scheme similar to that found in Canada. In the U.S., industrial designs may be protected by “design patents” rather than design registrations.

The protection provided by registration under the Industrial Design Act is an exclusive right or monopoly, not merely the right to prevent copying. Thus, even where copyright exists, obtaining a design registration may provide a broader effective scope of protection than would be provided by copyright alone.

While copyright and trademark law both have significant roles to play in the protection of some types of designs in Canada, industrial design registrations are undoubtedly the most important means of protecting designs for mass produced utilitarian objects.

a) Subject matter and scope of protection

The subject matter for a Canadian industrial design registration is statutorily defined as "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.” The French version of the statute uses a slightly different definition: "Caractéristiques ou combinaison de caractéristiques visuelles d'un objet fini, en ce qui touche la configuration, le motif ou les éléments décoratifs."

b) Novelty

The initial part of the novelty test is whether the design sought to be registered is identical with a previously registered design, or so closely resembling a previously registered design as to be confused with it. The design must also meet the requirement of being original, which the Industrial Design Office interprets to mean not simply as originating with the designer, but displaying some significant difference from what previously existed. The jurisprudence holds that a mere trade variant of an old design is not protectable, and a design may be rejected from registration based on lack of originality if it comprises only features that are already known.

An application to obtain an industrial design registration must be filed within one year of any publication of the design anywhere in the world. Publication includes a disclosure of the design that is not confidential, including for example, showing samples or prototypes, or even photographs or drawings, to prospective customers.

Canadian design applications can claim the benefit of priority under the Paris Convention if filed within six months of the priority application. However, Convention priority may have less practical importance than may be expected. The one-year grace period to protect designs that have been published runs to the actual filing date in Canada.

It is also possible to obtain the benefit of a prior domestic filing date, such as, when a divisional application is filed in response to a restriction requirement.

c) Term of protection

A Canadian design registration has a term of ten years from the date of issuance. This is subject to payment of a maintenance fee which is due before the expiry of the fifth anniversary (or within six months thereafter upon payment of an additional late maintenance fee).

Since the term of protection is measured from the date the registration is issued, rather than from the date when the application is filed, there is a possibility of extending the term of protection into the future by drawing out the application stage.

d) Multiple embodiments

A design application can include multiple versions of a design in a single application. The statute and regulations refer expressly to the permissibility in one application of design "variants," meaning designs that do not differ substantially from one another, as well as to designs for a "set," meaning a number of articles of the same general character ordinarily on sale together or intended to be used together to each of which the same design or variants thereof are applied.

Where an application is considered by the examiner to include embodiments of more than a single design, the examiner will issue a restriction requirement. The non-elected embodiment can be made the subject of a divisional application that is entitled to the same effective filing date. However, care must be taken that neither the parent nor the divisional application issues to registration ahead of the other because once registered, the design becomes citable against any pending application if the two designs are so closely resembling as to be "confounded" with each other.

e) Examination

Every design application is examined by the Industrial Design Office, which is administered as part of the Copyright and Industrial Design Branch of the Canadian Intellectual Property Office (CIPO). After initial processing, an application is checked for formalities, and subsequently classified and searched. It then comes before an examiner who determines if the design and application meet all of the requirements of the Industrial Design Act and the Industrial Design Regulations. If the application or any of its component parts, such as the drawings, do not comply with the Regulations, or if the design is not considered to be novel or original, the examiner issues a report setting out the Office's objections and prescribing a period in which the applicant may respond. Typically, an applicant's response may include arguments or further information, or amendments to the drawings or description.

If the applicant is not successful in overcoming any objections, the applicant can request a review of the examiner's position by the Patent Appeal Board. Decisions of the Patent Appeal Board may be appealed to the Federal Court.

f) Enforcement

Registration of a design gives the owner the exclusive right to make, import for the purpose of trade or business, sell, rent, offer, or expose for sale or rent, any articles in respect of which the design is registered and to which the registered design, or a design that does not differ substantially from it, has been applied. An action for infringement may be brought in the superior court of any province, or in the Federal Court. The Federal Court is also expressly given concurrent jurisdiction to determine questions relating to ownership or other rights in a design. Only the Federal Court may order the expungement or revision of a design registration.

In many cases where infringement of a registered design is alleged, the design complained of is not identical to a registered design. It thus becomes necessary to assess whether or not the differences are substantial. The statute provides that in considering whether differences are substantial, the extent to which the registered design differs from previously published designs may be taken into account.

The remedies available for design infringement include damages or an accounting of profits, punitive damages, injunctions, and destruction of delivery up of any infringing articles. An injunction is the only remedy available if the infringer can establish that he was not aware, and had no reasonable grounds to suspect, that the design was registered. However, a registrant can avoid this possible limitation by appropriate marking: an encircled "D" with the name of the proprietor of the design.

3. Copyright protection for designs

Although industrial designs may involve structural considerations derived from an article's utilitarian function, designs may nonetheless qualify for copyright protection as artistic works. To the extent that copyright is available, it provides a number of advantages over other forms of legal protection for designs. In particular, copyright arises automatically when an original work is created, and the term of protection in most cases lasts throughout the life of the author, plus an additional 50 years. Moreover, a work may qualify for copyright protection even if it is not novel or significantly different from earlier works, as long as it was not itself copied.

Therefore, it is usually desirable to rely on copyright to protect industrial designs wherever possible, even if protection is also applied for under the Industrial Design Act. However, copyright is not always available to protect designs.

In Canada, the limitations in using copyright to protect designs depend on when the design was created. For designs created prior to a statutory amendment that came into effect on June 8, 1988, copyright in industrial designs is not recognized at all, except for designs that are not used or intended to be used as models or patterns to be multiplied by an industrial process; a design is deemed to be used as a model or pattern to be multiplied by an industrial process if the design is applied to wallpaper, carpeting, textiles, or lace, or if it is reproduced or intended to be reproduced in more than 50 articles.

For designs created after the 1988 amendment, there is no general denial of copyright in any original industrial design. However, copyright may become unenforceable once more than 50 articles embodying the design have been made if the design is applied to articles that have a utilitarian function. For such designs, copyright remains enforceable only where the design is one of certain specified types, such as representations of a real or fictitious being, place or event, and graphic or photographic matter applied to the face of the article. For designs applied to non-utilitarian articles, that is, articles that merely serve as a substrate for artistic or literary matter, copyright also continues to be enforceable regardless of the number of articles made.

In many other countries there are different limitations on the extent to which copyright can protect industrial designs. In the U.S., for example, a distinction is similarly drawn between utilitarian articles and ones that merely portray the appearance of the article or convey information. U.S. law also recognizes that copyright may exist in a design for a useful object; however, copyright arises only if, and to the extent that, such a design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

4. Trademark protection for designs

Designs are applied to articles to give them a specific appearance and thereby make them visually distinct. The ability to distinguish one trader's goods from those of others is the essential role of a trademark. Accordingly, trademark law also comes into play in protecting industrial designs.

Trademark protection for designs has the advantage of potentially lasting indefinitely. Moreover, trademark rights do not depend on having a chain of title extending back to the design creator. However, they are dependant on establishing that the public associates the design with a single source.

The main problem with relying on trademark law to protect product shapes is that it generally requires a significant amount of time and marketing expense before the shape of a product or its packaging becomes recognized by the public as distinguishing origin and is associated with a single source. How long it may take depends on many factors, including how distinctive the product shape is.

In Canada and in certain other countries including the U.S., trademark rights are recognized in unregistered trademarks as well as registered trademarks. Registration though, provides a number of advantages and product shapes can be registered as trademarks in both Canada and the U.S. upon a showing of actual distinctiveness.

One strategy that has been recognized in trying to obtain both short term and long term protection for product and package configurations is first to apply for and obtain protection under the Industrial Design Act, and later to apply for and obtain a registration under the Trade-marks Act after the design has become distinctive.