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Index to this chapter.
In this section we will
look at what an Industrial Design is, how it can benefit you, the
advantages of registering, and how to go about it. Keep in mind that
this guide offers general information only, and does not cover all the
complex issues of Industrial Design law. For exact definitions and
details, consult the Industrial Design Act, the Industrial Design Rules,
and decisions of the courts in specific cases. You can find these texts
in many libraries. You can also buy a copy of the Act and Rules in any
bookstore selling Federal government publications.
A well designed chair is not just a pleasure to sit on, but a pleasure to look at as well. This can be said for almost every manufactured product: its success in the marketplace will depend not only on its functionality, but on its aesthetic appeal. That is why manufacturers invest a great deal of money and know how in their industrial designs and why an original design is considered a valuable intellectual property.
If you are the creator of, or an investor in, an original industrial design, Canadian law offers protection from unlawful imitation of this design. The Industrial Design Act, like other forms of intellectual property legislation, works to protect owners while promoting the orderly exchange of information. The way to obtain such protection is to register your design with the Canadian Industrial Design Office.
Your industrial design is worth a great deal in time
and money, and it may mean the success of an entire enterprise. Lawyers
and accountants are reminded that It pays to protect your client's
intellectual property by knowing their rights and how to use them.
In this guide we will look at what industrial designs are, what makes them register-able, the advantages of registration and how to go about it. Keep in mind that this site offers general information only and does not cover all the complex issues that may arise throughout the registration procedures. It should also be noted that this guide is not an authoritative guide on Canadian law regarding industrial design.
For exact definitions and detailed regulations, consult the Industrial Design Act, the Industrial Designs Rules and legal texts on intellectual property available in many libraries. The Canadian Industrial Design Office can also provide further information.
The Canadian Industrial Design Office
- the federal agency responsible for registering industrial designs is
the Canadian Industrial Design Office. The Office is part of a larger
agency called the Canadian Intellectual Property Office
(CIPO), which is part of Industry Canada. In addition
to industrial designs, CIPO is responsible for other forms of
An industrial design is the shape, pattern or ornamentation applied to a useful article that is mass produced. It may be the shape of a table, the ornamentation on the handle of a spoon, and it may be made by hand, tool or machine. The design has features intended for visual appeal. However, merits of those features are not part of the application.
People often confuse industrial designs with other forms of intellectual property. A copyright is legal protection for an artistic endeavour. Often an industrial design is first created as a work of art, and as such, is originally protected by the Copyright Act. An artistic work is protected under the Copyright Act automatically, but a design is protected under the Industrial Design Act only if it is registered. Therefore, it may be a good idea to register your design, even if your have copyright protection for the original art. If you are in doubt about the appropriate course, it may be wise to consult a lawyer or a registered patent agent.
Patents are for new inventions or processes that offer innovative and useful functions. Canadian law regards the functional aspects and design aspects of articles quite separately. Therefore, you cannot list a function as an element of an industrial design. You may, however, be able to obtain a patent for an article's functional aspects and an industrial design for its aesthetic ones. Suppose you develops a new kind of folding chair. The way the chair folds, its lightweight construction, its strength and its durability are all functional qualities. The industrial design features would include the shape and ornamentation of the chair, any patterns on it and its appearance (folded and unfolded).
Trademarks are used to distinguish the goods or
services of one person or organization from those of another. A design
feature of a product or its packaging can be an aspect that distinguishes
it from someone else's product. You can register such a feature as an
industrial design and, in a separate process, as a trademark. Suppose,
for example, you created a soft drink bottle with a unique shape. You
could, register the shape with the Industrial Design Office and later as
a distinguishing guise (a type of trademark) with the Trademarks Office.
Keep in mind that for this bottle to be considered a trademark it MUST
be put on the market and become associated with your product. Therefore,
to ensure maximum protection your might wish to seek industrial design
Every manufacturer of every product that has a visual
feature that can be identified as coming from that manufacturer or with
whom the manufacturer seeks to be identified. To be eligible for
registration a design must be original and be produced in quantity or
intending to do so.
In this Section we will discuss.
When to File An Application
When to File an Application
there is no time limit for filing an application as long as the design has never been published. The term "published" in this context means that the design has been made public or offered for commercial use. It is best to file as quickly as possible if publication has occurred. You must file within 12 months of publication or you will lose your exclusive rights to the design.
In making a decision about whether your design can be registered, the Industrial Design Office may ask for further information. Such information may be needed if it appears that the article is a component of a larger machine or part of another article which is purely functional such as;
Why you Should Register
the advantage of registering your industrial design
is that it records your exclusive rights to the design. Registration
enables you to prevent others from making, using, renting or selling a
design in Canada for up to 10 years. Keep in mind that, unless your
register a design, you can make no legal claim of ownership and have no
legal protection from imitation. This is different from trademark and
copyright protection, which allows you to claim ownership even without
Only the proprietor of a design may apply for and obtain registration for an industrial design. Usually, you are considered to be the proprietor if you created the design. However, if you have been hired under contract to develop a design by someone else, then that person is the proprietor and is the only one entitled to apply for registration. If you work together with other people to create the design, they should file for registration as joint proprietors (unless they are all working under commission). If you have acquired ownership of a design then you may apply if the design has not been published in the past 12 months. If you are an employee of a company and develop a design as part of employment, then the employer may be the proprietor. In that case only the employer may apply.
Industrial design registration is valid only if
applied for and obtained in the name of the proprietor. You will save
himself time and expense by resolving the issue of ownership before
applying for registration.
Conduct a search of official records to determine
whether this design is truly new and original. This may give you the
opportunity to see other designs. You should also keep the design
The following can not be register under the Industrial Design Act:
How Long the Process Takes
In order to meet the obligation of an international treaty signed by Canada, the Office does not register any design until six months after the date of' filing. Therefore, normally, it takes between 6 and 12 months to have your application examined and registered by the Office.
The Office examines applications on a first come, first served basis. If your application is properly prepared, registration will occur as quickly as possible. But if the application is not complete or incorrectly completed, the process will take longer, in which case the speed of registration will depend very much on how quickly you respond to queries, requests for changes, and other information from the Office.
You may be granted faster service if you believe that
the design has already been, or is about to be imitated by someone else.
In such a case, the office will proceed with examination as soon as you
notify them of the problem.
As of January 1, 1994, registration is for a ten year term. Before the expiry of five years from the date of the registration of the design, a maintenance fee must be paid. Once the term has expired, anyone is free to make, use, rent or sell the design in Canada,
For designs registered prior to January 1, 1994,
registration was for a five year term renewable for a further five
years. Once these terms have expired, anyone is free to make, use, rent
or sell the design in Canada.
You must pay a fee to have an application examined by
the Industrial Design Office. There are additional fees for renewal and
late renewal of a design registered prior to January 1, 1994, and for
maintenance and late payment of the maintenance fee of designs
registered after January 1, 1994. Fees are subject to change without
You may file an application for an industrial design registration, and the Industrial Design Office will give the basic information needed to do so. the Office will not, however, prepare an application or conduct a register-ability search of existing designs. The Office will not express an opinion about the aesthetic or commercial merits of your design or tell you in advance of filing whether it qualifies for registration.
Drafting an application requires careful attention to
detail and knowledge of the regulations. For this reason, your may hire
a registered patent agent to prepare and prosecute that is, to follow
through on the application. Most industrial design applications are done
this way. Registered patent agents are experienced in the field.
A complete application for an industrial design has four basic elements which are required by the Industrial Design Act: the are;
In addition, foreign applicants must provide the name and address of someone in Canada who will act as their representative for service. The application must follow the format of an official form that can be obtained free of charge from the Industrial Design Office or from your regional Industry Canada office. The Office will also provide you with a filing certificate and cyouck list.
Remember the following important points when you
complete an application:
Send the completed application to:
Industrial Design Office
Any correspondence sent to the Industrial Design office through the priority courier service of Canada Post Corporation will be considered received by the Office on the date stamped on the envelope by the priority courier service.
the description - the description you set out on the application must be of the design, not the article to which it has been applied. For example, do not describe a chair (four legs, a seat and a back) but rather describe the design features that make your chair visually unique. You does not need to describe every particular visual feature of the design, but you should indicate what it is and what you believes are its original visual features.
Keep in mind that you or your agent is responsible for giving an accurate, adequate description of your design. The Industrial Design Office can only ensure that your wording meets the basic requirements of the Act. It's up to you to ensure that it covers all the distinctive features of the design.
Since the courts may use your description to help determine the limits of protection for this design, you should word the description with care and precision. If the description is too broad, you may over extend the scope of the design, and it may be impossible to enforce. It is important to describe the important features of the design to show how it is distinctive.
Keep the following in mind when you word a
Drawings and photographs - your application must include drawings or photographs of the design as applied to the article of manufacture. You must draw or photograph the design as it appears in the product. Detailed views may be shown separately. The function of drawings or photographs is to show the design clearly. Drawings or photographs should be consistent with, and complementary to, the description.
Size and Paper Quality and Mailing Instructions - whether you submit drawings or photographs, they should be on good quality paper, sized either 22 x 28 cm (8 1/2 x 11 inches) or 20 X 33 cm (8 x 13 inches). They must be able to be clearly reproduced by photocopying equipment. You must send all drawings flat, not rolled, and they should be protected by a heavy sheet of cardboard.
Margin - there must be a clear margin of approximately 2.5 cm (or I inch) on the left hand side of the paper.
Character of Line/Quality - In the case of drawings, make every line, no matter how fine, with black ink and ensure that they are permanent. All lines must be clear and full. Avoid fine or crowded lines. You may use dotted or stippled lines to distinguish surrounding structure, but the article itself must be shown in solid lines. You have the option of highlighting the design features with heavy black lines or by other means as long as the result is clear and can be reproduced by photocopying equipment. Do not include stippled or broken lines which depict hidden structural or functional details that are not part of the design.
Photographs - Must show every feature of the design clearly. The angle from which the photograph is taken must not distort the true image of the article, and it must stand alone against a neutral (blank) background.
Scale - All drawings must be sufficiently large so that what is described can be clearly seen. They must also be consistent in terms of scale (except for enlargement views) and must be easily readable.
Content - your drawing or photograph should show every feature of the design as applied to the article into which it has been incorporated. This may require more than one view. The Design Office will not amend drawings.
Number of Views - your drawings or photographs should contain as many views as are necessary to present the design clearly.
Arrangement of Views - All the views on one sheet should stand in the same direction and be readable in an upright position. You must not superimpose one figure on another or place it within the outline of another. If views that are longer than the width of the paper are necessary for clear illustration of the design, you may turn the sheet on its side. The previously indicated 2.5 cm margin would then be on top.
Shading - you may use shading in drawings if you wish. Standard practice is the use of heavy lines on the shaded side of the object.
Miscellaneous Features - Occasionally, your will need to show the following features: opened and closed positions, cross sectional views (hatching), fragmentary views, flexible articles, transparent articles, and indefinite length and repeat patterns.
You drawings or photographs may show views of the article in both open and closed positions or in extended and retracted positions only if such views are necessary to reveal design features referred to in the description and if the article is normally seen and used in these different positions. You may present a cross sectional view if this is necessary to show the exterior profile of the article. Indicate the exposed cut surface by oblique parallel sectional lines. Do not use symbolic section lines to suggest a specific type of material.
If your article is made up of a number of components, the drawings or photographs should show the assembled article. Do not present exploded views. Further or more specific information on how to present these features is available by contacting the Industrial Design Office.
Identification - the title, descriptive matter, dimensions or names should not be included on the drawing, but you may sign (as proprietor) on the lower right hand corner of each sheet.
Samples - the Office may ask you to provide a sample of the design (e.g. a swatch of textile fabric) to supplement the drawing or photograph.
Keep in mind that the purpose of the above rules is to allow the examiners to see your design clearly as consumers would see it.
Multiple representations of the same design - Your industrial design application must be limited to a single design, but you may include several representations or variations of that design. These representations must meet the following conditions:
You may add multiple representations of a single
design to your application any time before registration. You does not
have to pay additional fees to do this. But if you changes his design
substantially, you will have to submit a new application. Once your
design is registered, no further changes can be made. If your series of
drawings does not meet the above conditions, you will have to choose one
and delete the rest from the application.
The process of obtaining a design registration is
made up of three distinct phases:
Your application will undergo a preliminary review by clerical staff to ensure that basic administrative requirements have been met. At this time a filing certificate will be issued; this is merely an acknowledgement that the application has been received and processed. It also gives you the number assigned to your application. If the application is incomplete you will also receive a notice advising you of what is required to complete it.
Every notice or report issued by the Office will give
a due date for reply. If you do not reply by that due date, your
application will be considered to be abandoned.
The first step in this phase of the process is the
classification of your application according to the particular type of
article to which it relates. This is followed by a formal assessment by
an examiner who will study your descriptions and drawings or
photographs. These will then be compared with previously registered and
published designs to ensure that your design is original and
register-able. Your design cannot be the same or similar to a design
already applied to a similar article of manufacture. The wording of the
description will also be considered to see that it accurately and
adequately describes the design features shown in the drawings.
Following this assessment the examiner will either allow (approve) the
application for registration or issue a report. The report will outline
the examiner's findings and tell you what information or amendments are
If the examiner does express some concerns about your application, you will probably be able to satisfy them by providing the information or making the suggested amendments. Don't feel that you must abandon the application simply because an objection has been raised. If you do not understand the report completely, call the examiner for clarification. The phone number will be given on the report. Your have four months to reply to the report, otherwise your application will become abandoned. If this occurs, You can reinstate your application by replying to the examiner's report.
Appeals - If you cannot satisfy the concerns expressed in the examiner's report, your application will be rejected in a final report issued by the Director of the Office. You may appeal this rejection to the Patent Appeal Board which will make recommendations to the Commissioner of Patents who will either reverse the Director's decision or reaffirm it in a final rejection. If you are still not satisfied, you may appeal the final rejection to the Federal Court of Canada whose decisions are appealable, in turn, to the Supreme Court of Canada.
- Should different people
apply to register essentially the same design, the Industrial Design
Office will examine the applications on a first-come, first-served
basis. The application with the earlier filing date (either the Canadian
filing date, or the Convention filing date, if filed earlier in another
country) will be registered.
It is possible that you may want to delay
registration. For example, you may wish to allow time to market or file
his design outside Canada. In this case, you should inform the Office in
writing. You may exercise the option to delay registration at the time
of filing your application or at any time before it is registered.
Once approved by the examiner your design will be
registered as soon as possible, provided that the six month waiting
period required by international convention has elapsed and you have not
requested delayed examination. You will receive a certificate of
registration which includes the description and a drawing of the
registered design. This certificate is evidence of ownership and the
originality of your design and gives him the exclusive right to make,
use and sell the design, in Canada, in whole or in part.
Designs registered prior to January 1, 1994 are valid for five years and may be renewed for a second five-year period by sending the Office a letter of request along with the renewal fee. The Office should receive your request before the first five-year term expires, but requests can still be made up to three months after the expiry date with payment of an additional fee. Your client's request for renewal should identify the registration by number, title and name of proprietor.
Designs registered after January 1, 1994 are valid
for ten years subject to payment of a maintenance fee. That fee shall be
paid by the registered proprietor or by his/your agent. Maintenance may
be requested at any time during the first five-year period upon payment
of the basic maintenance fee. However, a six-month grace period exists
during which maintenance may still be requested but this requires
payment of an additional fee. Your request should identify the
registration by number, title and name of proprietor.
You do not have to mark your product in order to indicate that it is registered as a design, but marking does give extra protection. The proper mark is a capital "D" inside a circle and the name, abbreviation thereof, of the design's proprietor on the article, its label or packaging.
If your product is marked in this way, a court could
award a remedy, such as financial compensation, in the event that
someone is charged and found to be "infringing" (i.e.
violation) on his design. If there is no such mark, the court cannot
award a remedy other than forbidding the other party from using your
design (an "injunction").
As proprietor, you may take legal action against
anyone who infringes your design in Canada. It is your responsibility to
take such action and you must do so within three years of the alleged
infringement. The Industrial Design Office will not launch legal
proceedings on your behalf or police your rights in any way.
As the proprietor of a registered industrial design,
your have the exclusive right in Canada to make, use, rent or sell a
product incorporating that design. You may also sell all or some of your
rights to others (this is referred to as an assignment) or, you can
simply authorize others to use the design subject to stated conditions
(this is referred to as a license).
An "assignment" occurs when you sells all or part of your rights in the design permanently to another party. This party, or "assignee," assumes your ownership rights to make, use, rent or sell products incorporating the registered design and to authorize others to do so. Usually, the arrangement involves an exchange of money. The assignment must be in writing., but there are no prescribed forms for this. A sample form which meets the requirements of the Office is provided in Appendix B but that sample is a very simple one which may not adequately cover the interests of both parties should there be a dispute. For that reason it is advisable that assignments be prepared with the assistance of a lawyer.
The new owner should ensure that the assignment is recorded with the Industrial Design Office. This is done by sending in either the original or a certified copy of the assignment document along with the recordal fee. Recordal of the assignment allows the new owner to sue for damages if anyone infringes the design. Assignments may be recorded against pending or registered designs.
licenses - In many cases the greatest financial benefit comes from licensing the design. when you licenses your design, you allows someone else to use it in accordance with the particular terms and conditions set out in the license which are negotiated between the involved parties. In this case, you retains ownership and, you can, in some instances, license more than one party. You may, for example, license one party for western Canada, another for Ontario and Quebec and still another for the Maritimes. Similarly, you could have an exclusive license with one party for the period of the renewal. As with assignments, licenses should be registered. licenses tend to be more involved than assignments and for that reason it is even more important to consult a lawyer if you is considering a licensing agreement.
If you wish to seek out
Canadian manufacturers who might be interested in buying, licensing or
leasing your design rights, two publications would be useful: The
Canadian Trade Index, issued by the Canadian Manufacturers'
Association, Toronto: and Frazer's Canadian Trade Directory.
Both are available in public libraries.
Registering your design with the Canadian Industrial Design Office gives him exclusive rights in Canada only. To enjoy similar rights abroad, you must apply for them in each country separately. Most countries have equivalent industrial design protection. A list of foreign offices is available from the Office. the United Kingdom has industrial design laws that are very similar to those of Canada, and the same term, "industrial design," is used.
The United States uses the term "design patent" to describe what roughly corresponds to the Canadian registered industrial design. Be careful not to confuse U.S. design patents with patents for inventions. Procedures for obtaining international design rights are partially governed by an international treaty called the Paris Convention for the Protection of Industrial Property. the Paris Convention, which has some 90 member countries, including Canada, allows applicants to invoke what is called "Convention priority." This means that someone who has filed for design registration in one Convention country has six months in which to file an application for the design in another country and be accorded the same rights as if you or she had filed in the second country on the original filing date.
Suppose, for example, you applies to register a design in Canada on January 5, 1994. You then have until July 5, 1994 to file for design rights in any other Convention country and claim the original Canadian filing date for that country.
It is important to note that in some countries your
application could be rejected if you or someone else has already
registered the design previously. To assist owners of designs in Canada
in avoiding this unusual situation, the Canadian Industrial Design
Office gives applicants the option of delaying registration so that
their application in another country can proceed at the same time as
their application in Canada.
The industrial Design Act and Industrial Designs Rules will give you the details of regulations that govern design rights as they are spelled out in law. To obtain copies, contact:
The Canadian Government
Fee Schedule, Industrial Design -
1. Examining an application to register an industrial design and issuing a certificate of registration $ 160.00
2. Maintaining a design registered after January 1, 1994:
(a) if the request is received within five (5) years
of the registration date $ 215.00?
3. Examining and registering an application to register an assignment, a license or other document affecting an industrial design and issuing a certificate of registration
(a) for the first industrial design referred to in
the assignment, license or other document $ 35.00
4. Providing copies of, or extracts from, the Register, or copies of certificates, drawings, drawn copies of industrial designs or other documents
(a) for each sheet, when a photocopy $ 0.50
5. Certification of copies of documents:
certification document costs $15.00 plus charge for photocopies of application at $0.50 a page
e.g.: certification $ 15.00
Q) What is an industrial design?
Q) Must I register my industrial design in
order to be protected?
Q) What cannot be protected by an industrial
Q) Can I register my design as an artistic
work under the Copyright Act?
Q) If I register my design in Canada, am I
protected in other countries?
Q) Is there a time limit for filing an
application for registration?
Q) What papers do I need in order to apply
for industrial design registration?
Q) What type of description do I need to
Q) What type of drawings, or photographs are
Q) If I have a registered design, do I have
to put any marking on the articles to indicate this?
Q) If I see a good design outside Canada and
it does not appear to be on the market in Canada, can I register that
design under my name here?
Q) How will the Industrial Design Office know
if I did not originate the design?
Q) Can anyone make a search through
Industrial Design Office records to see what has been protected
Q) May non-Canadians register their designs
Q) If I sell my rights to a design to someone
else, do I need to inform the Industrial Design Office?
Q) Would the Industrial Design Office stop
someone else from infringing my design?
Q) Can I get help in filing an application
for industrial design protection?
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