By Richard Stobbe

Industrial design law in Canada protects the visual features of shape, configuration, pattern or ornamentation which are applied to a product. Functional elements are not protected.

Think of the unique shape of a bottle. The functional elements – such as a handle, a cap or lid – those elements could not be protected by industrial design, but design elements like a curved neck, or say a ridged pattern or other ornamental features could be protected.

If the article or product has been “published” (i.e., it’s been made public or offered for sale or use) then it won’t be eligible for protection. However, if the product or article has been “published”, there is a 12 month grace period in which to obtain registration. So timing is important and protection can be lost if the product launch is not coordinated with IP rights protection.

For protection under the Industrial Designs Act, registration is required, and lasts for 10 years from the date of registration. Note that at the five year point, a maintenance fee is required. After the expiry of the 10-year term, the design is available for anyone in Canada to make, import, rent or sell.

Some points to consider for the use of industrial design law as a tool for strategic IP protection:

• industrial designs (also known as a design patent in the US) can be a perfect fit for companies selling manufactured consumer goods and packaged goods, but can also be a competitive tool for service companies who are trying to protect a product or device that is used or sold as part of a service offering
• industrial design can help fill in the gaps between utility patents, trademarks and copyright
• when considering protection, focus on features that would distinguish your product from competitors, and features that competitors or knock-off infringers would want to copy in order to mimic your products
• the scope and period of protection is much narrower than the scope of a utility patent, but it can be a very useful tool, and much more cost-effective means of obtaining protection in the right circumstances.

Talk to experienced IP counsel for advice on exploring the possible advantages of industrial design law for your organization.

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