5. Industrial Design
The subject matter of industrial design protection is featured in the shape, pattern, configuration and ornament, and any combination of such features, which are judged solely by the eye and which can be applied to a manufactured article.
Extent of Protection
Industrial design protection is available only upon obtaining registration within one year of “disclosure” of the design. The term of registration will be the longer of (a) ten years from the registration date, or (b) fifteen years from the application filing date. Applicants who complete prosecution within five years of the filing date will benefit from a longer period within which to enforce their rights.
The design must not be “disclosed” more than one year prior to the filing of the application for registration with the Canadian Intellectual Property Office (CIPO). This includes sale, display at a trade show, publication in a brochure or catalogue, etc.
Who can apply for Industrial Design Protection?
Registration of the design must be in the name of the proprietor, who is either the author or another person for whom the design was made.
The Novelty Requirement
A design must be novel at the date of filing to be a valid registration. In other words, a design cannot “substantially similar” to another design that was previously disclosed more than 12 months prior to filing the application.
Relationship between Trademarks and Industrial Design
Registration as a design and registration as a trademark are not mutually exclusive. In other words, the subject matter of an application to register a trademark is also capable of being registered as a design.
Transfers and Assignments
Rights to a registered industrial design may be transferred in writing, either in whole or in part. Any such transfer/assignment may be registered. The benefit to registering is that an earlier unregistered assignment will be void against a later registered assignment.
Registration gives the right to the exclusive use of the design. During the term of registration, no person can, without being assigned rights, make, import for the purpose of trade or business, sell, rent or offer to sell or rent, any article in respect of which the design is registered. It is not an infringement unless a substantial part of the total design is taken. An intention in good faith not to infringe is not a defence to infringement.