Originally published June 29, 2016
Today, on World Industrial Design Day, we highlight some of the reasons to register industrial designs in Canada.
Canadian design registrations are part of a strong IP portfolio
Design protection complements other forms of IP protection, to provide comprehensive IP coverage. For example, an initial industrial design registration, followed by a trademark registration, can provide seamless protection for the appearance of an article. Specifically, Canadian law allows for the appearance of an article to act as a trademark. Such a trademark is known in Canada as a 'distinguishing guise'. To support a claim for rights in a distinguishing guise, an applicant must show that the public associates the appearance of the article with its source. When a product is new to the marketplace, it can be registered as an industrial design. Over the term of the design registration, the owner can develop the recognition of the appearance of the article required to be able to register the distinguishing guise which can be enforced after the industrial design registration expires.
Also, many consumer products that incorporate patentable features also have a unique look and feel which can be protected by an industrial design registration. When considering the sale of competing goods that are imported into Canada from the U.S. or abroad, the possibility of assessing infringement based on similarity of outward appearance, rather than having to inspect the functionality of various components, may prove cost- and time-effective.
The Canadian design regime is flexible
The Canadian design regime permits the owner of the design to adopt advantageous strategies to prosecute their applications and to derive maximum value from their designs.
As is the case in many other jurisdictions, even after a design has been published, the owner of the design can still apply to register the design in Canada within one year of the publication date.
Design applications are not publically available and an applied-for design is only made available to the public upon registration of the design. As well, registration can be delayed, allowing the owner of the design to keep the design confidential for an extended period. Conversely, it is possible to request accelerated examination of the application to speed up the time to registration if, for example, there is a need to obtain the registration in order to enforce rights in the design.
Moreover, the Canadian design regime does not merely provide flexibility in controlling the timing of prosecution, but also in deciding what scope of protection is sought. In particular, it is not necessary to claim an article's design in its entirety. While the entire article must be shown, it is possible to claim only portions of the design. Thus, less relevant aspects of the design can be excluded from the claim and the design registration can be obtained for a broader scope of protection.
Canada also provides a divisional application regime, allowing applicants to file multiple designs in a single application in order to defer the decision on which of these designs to carry through to registration.
More bang for your buck
Obtaining a design registration in Canada is cost effective. There are no annual maintenance fees to maintain an application and no fee to register the design once it has been allowed. After registration there is only a single fee to maintain the registration. Furthermore, prosecuting design applications is streamlined with few formal requirements. For example, it is not necessary to submit certified copies of priority documents in Canada. Also, the recent depreciation of the Canadian dollar relative to the U.S. dollar means that the relative cost of obtaining design registrations in Canada has decreased even further for many foreign rights holders.
Canada is joining the Hague System
Changes to the Industrial Design Act to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs have received Royal Assent and are expected to come into force within the next two years. Once the Hague Agreement is implemented, applicants will have the flexibility to file for Canadian Industrial Design protection either directly or through the Hague System.
Also, amendments made to implement the Hague Agreement include extending the term of design registrations to the later of 15 years from the filing date or ten years from the date of registration. Because prosecution is normally considerably shorter than five years, these changes will typically increase the length of time that an owner of a design registration can enforce its exclusive right in the design.
Further, once the changes to implement the Hague Agreement are in force, the one year grace period will be tied to the priority date rather than the Canadian filing date, effectively extending the grace period to file in Canada where priority is claimed.
This article has highlighted aspects of Canada's industrial design protection regime that can be used in coordination with a global IP strategy to enhance the value of a North American IP portfolio. For more information on how pursuing design protection in Canada can be strategically used to your advantage, please contact a member of our Industrial Designs group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.