By Saranjit Dhindsa and Liz Gray
What is an Industrial Design?
If IP rights are a family, industrial design rights (also known as ‘design rights’ or ‘design patent rights’) are the shallowest family member—it’s what’s on the outside that counts. Industrial designs protect a product’s unique appearance, not how the product works or the materials that it’s made of.
Industrial designs are everywhere – from the shape of the original Coca Cola bottle to one of Apple’s GUIs to the iconic Hermes Birkin bag. Any article with unique ornamental features has the potential to be registered. In an increasingly competitive market, industrial design registration can provide a competitive edge.
What can be Registered as an Industrial Design?
According to s. 7 of the Canadian Industrial Design Act, a design is registrable if it meets the following criteria:
- the design is novel; and
- the design does not consist solely of features dictated by utilitarian function.
For a design to be novel, the article that features the design requires an element (or elements) that sets it apart from other items with the same function. Further, the specific aspect of the design that is to be protected cannot be dictated solely by utility. Take Apple’s iPhone: many of its functions are shared by other phones and devices, but, because the visual appearances of the iPhone and its GUIs are not solely dictated by function, many design patents cover different visual features of this device.
Of course, many things cannot be registered as an industrial design, including:
- an idea;
- a method of construction of an article;
- the materials used in the construction of an article; and
- the function of an article.
(Unlike design patents, patents (also called ‘utility patents’) can be used to protect the functions, compositions, and methods of use of new and useful inventions. However, patents cannot cover the ornamental / non-functional features of an article.)
The Value of Industrial Design Registrations in Practice
Apple’s iPhone is also an excellent illustration of how industrial design registrations can be used to protect a company’s intellectual property.
In 2007, Apple launched the first generation iPhone. The iPhone was not an entirely new invention, but it was different from the cellphones available at the time. Unlike many other devices in its class, the iPhone did not require a stylus, allowing users to interact with the device directly. But the iPhone had an even bigger draw: its audience’s recognition built around certain design features, including the small round ‘Home’ button, the rounded edges, the ‘slide-to-unlock’ bar, and other parts of the GUI. Apple strategically sought design registrations for these features and more.
The value of such strategic registrations was shown by the results of the “IP Wars” between Apple and Samsung. In 2011, Apple sued Samsung for patent infringement, while Samsung countersued Apple claiming mobile-communications patent infringement. Apple’s design patent portfolio was also brought into the suit: Apple had registered design patents on many elements of the iPhones, including the slot for the speaker, the home button, and the visual elements of the iPhone OS.
US courts found that Samsung had infringed both Apple’s utility patents and its designs, and the judgement helped demonstrate the value of designs in practice. Apple was awarded $5.3M USD for utility patent infringement, but a whopping $533M USD for the infringement of their design patents!
Benefits of Industrial Design Registration
- Industrial Designs have a 15-year period of protection in Canada and the US
- Lower cost than patenting process
- Relatively quick – can be registered in 12 to 18 months, compared to 3 years or more for patents
- Enforcement and assertion of infringement can be easier than for patents
- Damages can be sought on the entire sale price of product infringing a registered design
- Designs can be licensed out, thereby generating revenue
To discuss protecting a design, please contact our experts at BRION RAFFOUL LLP LLP.