Design Basics

Designs (called “industrial designs” in Canada and “design patents” in some other jurisdictions) protect the look of a product. In other words, designs provide the owner with the exclusive right to the pure aesthetic (i.e., the shape, configuration, pattern, ornament, and/or colour) of a product as judged solely by the eye. Importantly, designs do not protect the functionality of a product. A design’s exclusive right begins on the date of registration and continues for the later of 10 years from the date of registration and 15 years from the filing date.

The rights acquired by a Canadian Industrial Design extend throughout Canada, but not to other countries. Similarly, foreign design patents do not protect a design in Canada. Design applications must be filed in each country separately.

That said, there is a mechanism called a Hague Design filing, which provides a way of registering up to 100 designs in 73 contracting parties covering 90 countries with a single application. The applications are reviewed for formalities at an International stage; however, substantive examination is still conducted in each designated country.

A design can be registered if the design is

• novel (does not differ substantially from a design applied to the same or analogous product); and
• does not consist only of features that are dictated solely by a utilitarian function of the product.

You cannot, however, protect an idea, a method of construction, the materials used to make the product, or the function of the product with a design.

Industrial designs are registered to the first application filed for that design. Accordingly, it is recommended to file a design application as soon as possible after creating the design.

It is very important not to advertise, display, or publish information about the design before the design application is filed. Public disclosure of the design before filing can be used against the design application and jeopardize the possibility of obtaining a granted design.

In Canada, it is possible to file a design application within 12 months of a public disclosure by the applicant. This public disclosure is not a bar to design registration as long as the application is filed by the one (1) year anniversary of the public disclosure.