Industrial designs – A lesser-known form of IP protection

When businesses consider intellectual property, they often think of trademarks, patents, and copyrights. However, for some businesses, especially those that design and manufacture consumer goods, registering an industrial design (or design patent in the US) is worth considering.

Industrial designs in Canada are governed by the Industrial Design Act and the Industrial Design Regulations. The Canadian Intellectual Property Office (“CIPO”) examines applications and maintains the register of industrial designs. Once granted, an industrial design registration generally provides the holder the exclusive right to prevent others from making, selling, importing, or renting any product embodying the registered design. The term of protection for an industrial design is generally ten years from the registration date.

An industrial design relates to the aesthetic appearance or visual features of a product, including its shape, pattern, or ornamentation. To qualify for protection, a design must be novel and “substantially” different from existing designs. Therefore, if a business discloses the design publicly prior to filing, it may inadvertently forfeit the right to obtain valid protection. However, there is a grace period of 12 months to file for an industrial design when the owner of the design discloses it to the public. Therefore, it is important to file the application for registration in a timely manner to ensure that the design remains eligible, particularly in light of the novelty requirements.

To register an industrial design in Canada, an applicant generally files an application with CIPO that includes a clear representation of the design. Since the design is based on aesthetic features, the representations of the design must be clear and accurate. Descriptions or disclaimers may be required to delineate which portions of the product will be protected. Failure to identify the portions that fall within the design may result in a registration that is narrow in scope or open the registration to challenges based on prior art. While it is not required, a voluntary search of existing prior art, such as registrations, can provide insight to confirm that the design is indeed original and to identify any prior registrations that might pose an obstacle.

Although industrial design infringement cases are relatively rare in Canada, enforcing industrial designs is much more common. Most disputes are resolved through negotiation or settlement before reaching the courts, so it is difficult to obtain accurate statistics pertaining to industrial design enforcement. For products with both innovative functionality and a new design, an industrial design registration is generally easier and cheaper to obtain than a utility patent registration. Therefore, industrial designs may provide a cost-effective way for businesses to create barriers to entry for competitors.

Many countries have equivalent protections for industrial designs.  When seeking protection for an industrial design in multiple countries, applicants may apply for protection in each country.  Alternatively, applicants may take advantage of the Hague System for the International Registration of Industrial Designs (“Hague System”). Administered by the World Intellectual Property Organization (“WIPO”), the Hague System offers a simplified path to seek design protection in multiple jurisdictions, including Canada. Instead of filing separate applications in each country individually, an applicant submits a single international application, designating the member countries or regions in which protection is desired. This reduces administrative burdens and can result in cost savings on translation, filing, and legal fees.

For applicants interested in global commercial strategies, the Hague System is particularly convenient. Because design rights can be crucial in aesthetics-driven industries—such as consumer electronics, furniture, apparel, jewelry, and automotive products—obtaining international protection through one consolidated procedure streamlines market entry and defense of design rights abroad. Applicants should remain attentive to local nuances in each jurisdiction’s laws or procedures, as some countries may conduct substantive examinations that differ from Canada’s approach. Adherence to each jurisdiction’s disclosure, novelty, and drawing requirements is important to ensure the design’s registrability.

Although the Hague System can significantly simplify the international filing process, it is prudent to consult with legal counsel or a qualified intellectual property professional to ensure that the application meets the requisites of each designated country and that any potential conflicts with previously filed or registered designs are addressed. Careful drafting of the design representations—along with strategic timing regarding disclosures, filing dates, and priority claims—can help maximize and preserve legal rights in the design.