Don't Overlook The Design

Most companies are aware of how desirable it is to obtain patents for their inventions and trade-marks for their names and logos.  Many are not however aware of an often forgotten form of protection for the appearance of their products – the industrial design. 

As discussed in previous columns, industrial design registrations protect the shape, pattern or ornamental features of a finished article.  The registration does not cover the finished article itself, but rather the design as applied to that article.  Thus it is the appearance of the article with the design applied to as it is judged by the eye of a viewer that is protected. 

An industrial design is not permitted to cover aspects of the article which are dictated by the way the article functions.  Similarly methods or processes of constructing that article are also not registerable.  Either of these aspects are more properly protected by a patent.

What Does This Mean in Practice?
Consider the Canadian Industrial Design Registrations for an IPOD or a COCA-COLA bottle shown at: http://strategis.ic.gc.ca/app/cipo/id/manageImage.do?fullAppNum=113547&language=eng&size=1&order=1&rotation=0&imageBrand=Application And http://strategis.ic.gc.ca/app/cipo/id/manageImage.do?fullAppNum=119709&language=eng&size=1&order=1&rotation=0&imageBrand=Application

In both cases, the design applied to the article (the portable media player and the beverage container) does not affect how the article works.  However in both cases, these designs do serve to clearly identify whose product it is simply by seeing this object.  This is the real power of the industrial design:  the product is clearly identified simply based on the public’s recognition of the design rather than by needing to carefully examine the product for a name or label.  If the design is an appealing or popular one, such as in the case of the IPOD, the industrial design prevents competitors from making their product appear similar to blur the distinction between their product and yours.

Time Limit
An industrial design (or design patent as they are referred to in the United States) lasts for a period of 10 year in Canada (14 years in the United States).  After or during this time, however, other forms of protection such as a distinguishing guise trade-mark may also be available under certain circumstances.

Don’t Delay
If a design has been disclosed to the public (for example by describing, selling, publicly displaying or distributing it) before a design application is filed, it is not registerable in most countries of the world.  One exception to this rule is in the United States and Canada where the proprietor has a one-year grace period to file a design application after the first time it is disclosed by the proprietor.  In practice, a design application should be filed before the design is published or any articles having the design applied thereto are sold.

This article is intended only to give a general background only on industrial designs.  Please contact the writer you have specific questions relating to whether you may have registerable industrial designs.