Industrial Designs
What are they and how do they protect me?
INDUSTRIAL DESIGNS protect the aesthetic value or visual appearance
of a product or special ornamentation or design which may be applied to a product.
Industrial Designs are referred to in the United States as "design patents",
while the term "utility patent" is used in the United States where Canadians use
the term "patent." Whenever you see the term "patenting the design,"
especially in American literature, this is a reference to protecting the outward or
external appearance of a product. If you have a product which has a particularly unique
visual appearance and you wish to have exclusive rights to that visual appearance or
design, you should arrange for an application to be prepared and filed on your behalf in
whichever country you intend to sell your product. If you are successful in your
application to protect your design, you are awarded the exclusive right to manufacture and
sell that product for specific periods of time (these vary depending on the country).
In Canada, the initial period of protection is five years and you can renew this for an
additional five years.
Example of items which you would normally protect by way of industrial design (design
patent) registration are board game designs or layouts, containers (Coca Cola bottle), or
numerous consumer products such as VCR cameras.
Industrial design protection is not terribly strong due to the nature of industrial
design. What you are attempting to protect in your industrial design registration is the
outward appearance of your product, but not the method of operation of your product or the
function which you product might perform or the benefit derived from the product. It is
only the appearance which is being protected and nothing else. If someone else was to
design a similar product, but one which looked quite different from yours, there would
likely be little or anything you could do to prevent the similar product from being sold.
The test used in this case is whether the average person on the street would form the
opinion that the two products came from different manufacturers or "flow through
different channels of trade": for example, if they were sold through different means
such as wholesale versus retail outlets.
If you intend to make use of a two dimensional rendering or drawing of your product
(i.e. on any packaging brochures, pamphlets or other advertising, marketing or promotion
material), we often recommend that our clients apply to register that two dimensional
rendering or drawing of their product as a Trade Mark under the Canadian or United States
Trade Mark Acts, rather than under the Industrial Design Act. This is a way of protecting
the way your product appears when the appearance of your product is used to promote the
sale of the product, as opposed to protecting the actual shape itself of the product. As
well, the length of time that a Trade Mark is protected is substantially better than for
an industrial design. In Canada, a Trade Mark is registered for an initial period of
fifteen years but may be renewed again and again, as long as you are making active use of
the Trade Mark. With an industrial design, the maximum period of protection in Canada is
ten years (as noted earlier, an initial five year period plus an additional five year term
when renewed). No further renewals of industrial design are possible beyond this ten year
period whereas perpetual renewals are possible with Trade Marks.
If the shape or appearance of your product is driven by factors which influence its
method of operation or function, then we usually recommend that a patent be pursued.
Wherever you have the option of protecting your product by way of a patent or by
industrial design, we always recommend patent as the best procedure since protection under
a patent registration is far stronger than registering under the Industrial Design Act. |
