This post is directed to entrepreneurs and developers who are building platforms incorporating features of social media networks, or building their own social media technologies, regarding design protection requirements in Canada. Several practice notices have been issued very recently by the Canadian Industrial Design Office, providing guidance on designs including colour and animated graphical user interfaces (GUIs), among others.
Often, the ornamental design elements of GUIs help drive customer engagement, providing the offering with eye-pleasing layouts, interfaces, and interactive objects that help, for example, guide a user's behavior or simply provide a sleek and streamlined experience. Platforms with poor usability and cluttered layouts have a hard time differentiating themselves in the market. For example, the platform may utilize customized GUI interfaces and design elements (e.g., icons) that contribute to an overall "allure" of a product or service. There may be protectable design elements in the GUI relating to the placement, sizing, orientation, etc. of graphical features such as dividers, widgets, icons, text, graphics, etc.
These features are especially important in the context of social media, where aspects of collaboration, sharing, and ease of use are important drivers of adoption.
With respect to these ornamental aspects, it is important to remember that original designs, including GUIs, are protectable in Canada, and offer an expedient set of exclusive rights that are useful in helping protect the uniqueness of the designs. These design rights co-exist alongside other types of intellectual property, such as patents, copyrights, and trademarks, and a particular design might be protectable by more than one type of intellectual property right.
Design rights are an often overlooked tool that can be helpful against counterfeiters or other third parties whose designs may be similar enough to cause confusion in the marketplace. Design patents have been filed by Facebook, LinkedIn, and Google, among others.
This article is directed to industrial designs, which are the Canadian version of what are known as design patents in the United States. Similar to design patents, industrial designs provide protection over visual or ornamental aspects of the visual elements of a product. Although there may be a notion that functional features cannot be the subject of an industrial design, it is important to remember that many features can be both ornamental and functional, and it is often not easy to separate the two. As long as the features include some ornamental element, they are protectable, even if they are entwined with functional features.
What is and is Not Protected
Industrial designs are different than patents ("patents" in Canada, "utility patents" in the US). Patents protect functional features, and industrial designs are instead directed to features pleasing to the eye. There are numerous differences between patents and industrial designs, but some of the key differences to remember are that designs provide protection for 10 years from the registration date, and the examination process is generally cheaper and faster than that for utility patent rights. Further, the figures of the industrial design are of the utmost importance, as opposed to the written description.
An industrial design specifically protects visual features of shape, configuration, pattern or ornament, and combinations thereof, applied to a finished article. The requirement is that the design is original. Industrial designs have to be filed within 12 months from public disclosure, and before the registration in Canada of any similar design. In a recent practice notice, the Canadian Industrial Design Office noted that colour may form part of a combination of features that constitute a design.
Paris Convention priority may also be claimed to foreign applications, but there is a 6-month time limit to do so. Claiming priority enables the application to be presumed to have been filed as of the original date of the foreign application. This is an important step that should not be overlooked – Canadian industrial designs are only enforceable in Canada so corresponding applications need to be filed in other jurisdictions. If the deadline is missed, there is a serious risk that your own design registrations in other jurisdictions will be cited against your applications during examination (which is extremely rare).
During the examination process, an Examiner will conduct a search and issue Examination Reports where the Examiner outlines arguments against registration. For example, the Examiner may cite a similar or identical design in asserting that the design is not original. The Examiner may also request better or clearer drawings, or point out deficiencies such as an inconsistency between views. A common objection is that there is more than one design in the application, and the Examiner may require that the design be divided into multiple design applications.
Industrial designs are commercially valuable rights that can be assigned, licensed, etc., or used to start a proceeding against a third party to enforce the exclusive rights afforded by the industrial design. The proper way to mark an industrial design in Canada is with a capital D inside a circle and a name or abbreviation of the design owner on the article, and marking helps provide notice of that the design is in fact registered.
Industrial designs have some intersection with other intellectual property rights (patents, trademarks, copyrights), and it is good practice to use a combination of overlapping rights to afford as many layers of protection over your design.
Protecting Interfaces
Static GUIs are protectable in Canada.
With respect to animated GUIs, a recent practice notice indicates these applications are also now being considered. In these applications, and that the drawings submitted with an application will be viewed as a sequence of frames and should sufficiently disclose the animated design for which protection is sought.
Solid lines should be used for features that form part of the design, and broken lines should be used for features that do not form part of the design (but are provided to show aspects of the design that are not being claimed for protection).
As a practical matter, the device (e.g., the monitor) in which the interface is provided should be provided in broken / stippled lines so that the design is not limited by the device in which it is provided. While not forming part of the design, broken lines are useful to help make it more clear what the article is and what the design features are. A number of different versions of the design should be prepared showing different combinations and permutations of elements in broken and solid lines, which are called variants. This provides differing scopes of protection and may facilitate enforcement. The scope of protection afforded by the courts may also vary based on how "crowded" a particular field of design is.
A Canadian application can be used as a basis for other foreign applications. Please note that not all jurisdictions allow broken lines – for example, China does not permit broken lines, but the broken lines can be rectified by simply deleting such lines by way of amendment or making them solid.
Originally published in March 2017
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