Canadian Intellectual Property Office. Copyright and Industrial Design Branch. Industrial Design Division : The Industrial Design Division receives, processes, classifies, searches and examines applications for industrial designs. The Division also registers assignments, licences and changes of ownership and collects fees. The primary clients of the Division are manufacturers (ranging from individuals to large corporations), the vast majority of which are represented by Patent Agents. No legal claim of ownership can be made for an industrial design unless it is registered. The owner of a registered industrial design has protection for 10 years, provided maintenance fees are paid.
The mandate of the Division is to register industrial designs, giving exclusive rights to the design and providing legal protection from imitation. Once registered, industrial designs are publicly disclosed and become part of the register maintained by the Division. These records are consulted by CIPO clients in preparation for filing new applications and for assessing infringement cases. The register is an invaluable reference tool, providing a historical snapshot of innovations in design since before Confederation, and may provide the impetus to improve existing designs.
Like trade-mark and copyright legislation, much the of industrial design law is based on the same earlier intellectual property acts. The Trade Mark and Design Act of 1868 set the foundation for registering of industrial designs in Canada. In 1970, the legislation was rewritten under the Industrial Design Act (R.S.C. 1970, Chap. I-8). More recently, in 1985, it was revised again.
As the leading expert in intellectual property law, Gordon F. Henderson recently wrote, generally, "industrial design law is often thought to be relatively unimportant." [Gordon Henderson, "An Overview of Intellectual Property," Trade-Marks Law of Canada, (Carswell, 1993) 7] This is not always the case, of course, but industrial designs certainly do not document the same valuable information or have the same consequences as patent or even trade-marks.
The Industrial Design Office is responsible for the function of registering industrial designs in Canada. An industrial design is defined as the shape, pattern, or ornamentation applied to a useful article that is mass-produced. It may be the shape of a chair or the ornamentation of a soup bowl, and it may be manufactured by hand, tool or machine. The design must have features for visual appeal, but the Industrial Design Division does not pass judgement on the qualities or merits of these features. Designs must be original and they must be produced in large quantities or be intended to do so in the future. Within twelve months of offering a product to the public, an application must be filed or the producer loses exclusive rights to the design. Unlike copyright legislation, unless a design is registered the designer can make no claim to special protection under the law.
Only visual acuities may be registered, not functional properties. Under the Act there are some limitations to what products may be registered. For instance, one can not register an idea, a method of construction, material used in the construction, articles that serve no purpose, designs that are utilitarian and provide no visual appeal, and designs that are not visible or hidden from view. Such designs are different than, say, fine art which would be covered under the various copyright laws, but the distinction can be blurred. Moreover, in some cases, an industrial design may become so well known that it acquires a status through association with a product or service. It may be argued then that the industrial design should be protected as a trade-mark distinguishing guise.
In order to register, a client must fill out the application and send it to the Industrial Design Division, after which the design is examined for originality. The Industrial Design Act requires that an application for an industrial design contain a written description of the original features of the design as well as drawings or photographs of the design. As a result of an international treaty on industrial design, the Industrial Design Division does not register until after six months from the date of filing. Of the applicants, approximately 25% are from Canadians or Canadian-based companies. In 1997, there were 3241 applications for Industrial Design protection.
The work process for obtaining registration focuses on the initial application. After an examination to ensure that the application is completed and contains the secondary documentation, the application is studied and compared against existing registered designs. The examiner will either allow the registration or complete a report indicating why it can not be registered. Conflicting designs are examined on a first-come, first-serve basis. If a design is rejected, appeals may be filed with the Patent Appeal Board. However, very few cases are appealed and it is estimated that less than 1% of cases make it to the board. Further appeals may be elevated to the Federal Court of Canada. The registration is for ten years, and once it is expired, anyone is free to make, use, rent or sell the design. CIPO Annual Report 2000-2001, p. 13
RDA 2000/017 Department of Industry Canadian Intellectual Property Office - Trade-marks Office and Copyright and Industrial Design Branch (Appraisal report)
