An industrial design registration can protect the ornamental or aesthetic aspect of a product. The potential areas of protection are very broad. For example, when Apple Inc. released its first-generation iPhone they secured many registered designs, including designs covering a rectangular front face with rounded corners and a raised rim, and a grid of 16 colorful icons on a black screen. These designs were successfully enforced against Samsung Electronics Co., Ltd.
What is an industrial design?
The Industrial Design Act provides that “design” means 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. A design may be made up of one or more features of shape, configuration, pattern or ornament. However protection does not extend to features applied to a useful article dictated solely by a utilitarian function of the article, or any method or principal of manufacture or construction.
What is Protected?
An industrial design can be:
- a shape
- a configuration
- a pattern
- an ornament
- any combination of these
An industrial design is applied to a finished article made by hand, tool or machine, and the features can be two- or three-dimensional. What can be protected is very broad. Everything from graphical user interfaces (GUIs) to fashion designs can be protected.
Obtaining Protection
The owner of a design may apply to register it by paying the prescribed fees and filing an application with the Industrial Design section of the Office of Commissioner of Patents. The application must include:
(a) a drawing or photograph of the design and a description of the design;
(b) a declaration that the design was not, to the owner’s knowledge, in use by any other person than the first owner when the design was adopted by the first owner; and
(c) any prescribed information.
There must be a written description of the design.
On receipt of an application, the application is classified, searched and examined by an examiner to ensure that the application meets the requirements of the Act and the Industrial Design Regulations.
The application will be refused if the application is filed more than one year after the publication of the design in Canada or anywhere else in the world. Publication means offering or making available the design to the public. Because of the lack of any other similar protection it is critical to satisfy this limitation.
The Benefits of Registration
An exclusive right for an industrial design is acquired by registration of the design under the Act. During the existence of an exclusive right, no person shall, without the licence of the owner of the design,
(a) make, import for trade or business, or sell, rent, or offer or expose 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; or
(b) do, in relation to a kit, anything specified in paragraph (a) that would constitute an infringement if done in relation to an article assembled from the kit.
There are no effective alternative remedies in Canada because unlike Europe or the U.K there is no unregistered design right. While an action for passing off is possible it can be very difficult to succeed. With a few exceptions a claim for copyright is precluded by the Copyright Act. We discussed these issues in a recent case comment.
The Term of Protection
Subject to payment of prescribed fees, the duration of the exclusive right is ten years beginning on the date of registration of the design. To maintain the exclusive right the owner must pay to the Commissioner of Patents an additional fee before the fifth anniversary of the registration. The owner has a grace period of six months from the expiry of the fifth anniversary of the registration to maintain the registration for which a further fee must be paid. If the design is not renewed within five years and six months the term expires at the end of that time.
Enforcement
The exclusive right will be infringed when the design or a design not differing substantially from it has been applied to the article for which the design was registered.
In considering whether differences are substantial, the extent to which the registered design differs from any published design may be considered.
To determine whether infringement has occurred, the following matters must be considered:
(a) were the activities of the defendant without the licence of the owner of the design?
(b) did the defendant engage in one of the activities described above?
(c) was the allegedly infringing article an article in respect of which the design has been registered? and
(d) was the design or a design not differing substantially from the design applied to the allegedly infringing article?
The Recent Amendments to the Act
The Act has been amended to make it consistent with the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs. It is anticipated that the amendments will be brought into force in 2019. The Agreement establishes an international system –that allows industrial designs to be protected in multiple countries or regions with minimal formalities.
Conclusion
Obtaining protection under the Industrial Design Act can help protect the ornamental or aesthetic aspects of a product. It is relatively cost effective and there are no effective alternative remedies in Canada because unlike Europe or the U.K there is no unregistered design right.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.