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Industrial Design

  1. What is an Industrial Design?
  2. What you cannot register?
  3. Does my company need an industrial design registration?
  4. Loss of Rights by premature public disclosure
  5. Filing without an industrial design search or crossing a busy street blindfolded
  6. Doing business abroad or exporting
  7. Industrial Design Expertise

What is an Industrial Design?

Like registered trade-marks, registered industrial designs are another form of an exclusive government granted monopoly. An industrial design (sometimes called a design patent) protects the original/unique visually appealing features of a product. It may be the visible appearance and shape of a product:

  • a car (Porsche);
  • the shape of a chair;
  • a computer screen/computer (iMac).

Industrial designs form part of the umbrella of creative rights known as intellectual property.

A registered industrial design provides you the right to exclude others throughout Canada or prevent them from importing or selling into Canada any goods bearing your industrial design. It also provides the exclusive right to make, use or sell your registered industrial designed product from the day the design is granted for a period of 10 years.

As with a trade-mark or copyright, you can profit from your registered industrial design by having agreements to:

  • use;
  • build;
  • license; or
  • sell.

An industrial design registration in Canada does not extend to foreign countries. There is no universal or worldwide industrial design registration. You must apply separately in and for other countries. Also, registered industrial designs in a foreign country do not protect an industrial design in Canada.

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What you cannot register?

An industrial design registration cannot protect:

  • a functional aspect of your product (see patent);
  • a design that is substantially similar to a registered industrial design;
  • design features appearance or shape of a product that are not immediately visible to the eye (inside an engine).

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Does my company need an industrial design registration?

Yes, if any, or part of your company’s success depends on its intellectual creativity from designing eye catching products. Without a proper intellectual property protection strategy, your company’s existence may be short-lived. Industrial designs:

  • can protect you against copying;
  • can earn licensing revenues;
  • may be used as leverage in negotiations; and
  • may be used as a defence in an infringement suit.

Lastly, independent research has shown that ownership of registered intellectual property significantly increases the market value of a company.

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Loss of Rights by premature public disclosure

In order to obtain a validly registered industrial design in Canada, you must file your industrial design application before you start advertising or showing your design to the public. If, however, you disclosed your design to the public before filing, there is a grace period that allows you to file within one year after the initial date that someone learned of or saw your design. This rule may not apply to other countries and you may therefore forfeit your industrial design rights.

To avoid forfeiture of industrial rights, you should ensure that prior to having discussions with or showing to any person your design, you obtain a signed binding non-disclosure Agreement drafted by legal counsel.

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Loss of Rights by premature public disclosure

Looking left and right before crossing a street is an option that comes with no guarantee that an accident will not happen. However it allows you to assess a life threatening risk. An industrial design search, in the same way, allows you to make an informed decision by learning what has already been registered and how your design can be distinguished from others.

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Doing business abroad or exporting

Whether you are physically shipping across Canadian borders or transferring data via the web, wherever you have a competitive edge, there is someone or a business out there that is ready to imitate or “improve” your design.

By filing an industrial design application, you are staking your claim in your target markets to safeguard your sales and reputation.

Canada belongs to several international conventions for facilitating filing in other countries. For instance, a Canadian applicant may file an industrial design application in another country within six months of the original application in Canada and still obtain in the foreign country the Canadian priority filing date.

Whether you are a Canadian company looking to sell your products abroad or a foreign company seeking to do business in Canada, identifying and protecting your intellectual property rights associated with your products will mean the difference between profits and losses.

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Industrial Design Expertise

In medicine, all doctors are technically qualified to help you. However, when you have a specific problem, you want and need to see a specialist. The same principle is applicable with intellectual property issues. You want and need to entrust your most valuable assets to an intellectual property professional with the expertise and experience to efficiently provide you with solutions.

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