Industrial Designs
2. How to Protect an Industrial Design
The visual appearance of the ornamental design may be protected under the Industrial Designs Act in Canada. Industrial design protection is purely a creature of statute, such that there is no protection for a design available at common law. Accordingly, (and ignoring the possible availability of copyright protection in certain limited circumstances) if your design has not been registered, you can make no legal claim to proprietary ownership of your design, such that you have no legal protection against imitation of your design by others who learn of it through non-confidential sources. Thus, any person could make, use, and sell an article embodying your design without compensating you.
In Canada, the registration of an industrial design gives the registered owner the exclusive right to prevent others from making, importing for the purpose of trade or business, selling, renting, or offering or exposing for sale or rent the article in respect of which the design was registered. The duration of this exclusive right is 10 years from the date of registration, but it is necessary to pay a renewal fee after the first five years of the registration in order to keep the registration in effect for the full 10 year period. These rights can be exploited by the creator, sold to another party, or licenced to another party, with a royalty being payable to the owner of the design registration.
In order to obtain a registration for an industrial design, it is necessary to prepare and file an application, together with the government filing fee. An application for an industrial design typically consists of the following: bibliographic information about the proprietor of the design, an indication of what the functional article is to which the design is applied, a description of which features of the design are claimed as original in the application, and a series of formal drawings of the article showing the claimed design from all views.
When a complete industrial design application is filed with the Industrial Designs Office, the application is assigned to an Examiner. The Examiner will analyze the application to ensure that the drawings adequately and consistently show the design, and that the description accurately and adequately describes the design features which are shown in the drawings. The Examiner will then conduct a search of all previously registered and published designs, in order to determine whether the subject design is original and registrable. If the design is the same as or closely similar to a prior design which has already been applied to a similar functional article, then the design cannot be registered. The Examiner will summarize and issue his/her findings in an Examiner's Report, and the applicant will have a chance to respond to the Examiner's Report by providing written submissions and/or by amending the application. If the Examiner's concerns cannot be satisfied, the application will be rejected in a final report. This final rejection can be appealed. If the Examiner is satisfied, then the application will be approved. A Certificate of Registration will then be issued in respect of the design. The entire process takes a minimum of 6 months from the filing date of the application, but the typical time frame is on the order of 9-15 months. In order to capitalize on your registered industrial design: (1) you can make and sell your product yourself; (2) you can sell your registered industrial design to another party; or (3) you can retain ownership in your design and merely license another person to make and sell items which embody your design, and collect a royalty under the license.