Protecting Product Shape and Appearance under the Industrial Designs Act
Protecting a design by registration may improve the competitiveness of the business since the registration can prevent the design from being copied and imitated by competitors. In addition, the design is a business asset which may become valuable and can be freely assigned or licensed.
The Industrial Design Act has been amended to make it consistent with the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs and to give the Governor in Council the authority to make regulations for carrying it into effect. The amendments were brought into force November 5, 2018. It is now possible to take advantage of The Hague Agreement and file an international application.
The World Intellectual Property Organization (WIPO) is responsible for implementation of the Hague Agreement. The Hague Agreement provides for registering up to 100 designs in currently 70 contracting parties by filing one single international application.
An international application under the Hague Agreement can be filed by any person that is a national, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in a contracting party, including Canada.
The Basic Elements of a Design
Product shape or appearance may be protected under the Industrial Design Act. The Act provides that “design” means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye. The definition is limited by section 5.1, which provides that no protection afforded by the Act extends to:
(a) features applied to a useful article that are dictated solely by a utilitarian function of the article; or
(b) any method or principle of manufacture or construction.
An industrial design registration may be initially obtained to protect product shape or appearance and after the shape or appearance has become distinctive a trademark consisting of a three-dimensional shape may be registered. One of the important advantages of obtaining an industrial design registration is that it can be protected through an action for infringement without showing secondary meaning associated with the design. However, the scope of protection will depend on the originality of the design.
The reference in the definition to “any combination of those features” makes it clear that a design may be made up of one or more of the features of shape, configuration, pattern or ornament.
Shape and configuration are important components of a “design”. Each term signifies something in three dimensions. “Shape” relates to the external form of the product, while “configuration” relates to the arrangement or the physical relationship of the components of the design to each other by which the shape of the composite product is arrived at. For example, in a design for a hot water bottle, a series of diagonal ribs both on the front and on the back of the bottle extending up to a narrow strip at the union of the back and front were found to constitute configuration.
Shape is the dominant feature of registered industrial designs. Even if the feature of the design which is original is one of configuration, pattern, or ornament, it is often the shape of the configured item, the shape of the elements of the pattern and the shape of the ornamental features which is protected.
Pattern and ornament may also be protected. In most cases, they can be treated as practically synonymous. Typically, they consist of something that is placed on a product for its decoration. The term “pattern” denotes a design made up of repetitive elements which are all the same.
Ornamentation must only distinguish the appearance of the product; there is no requirement that it beautify it.
Colour may form part of a design as a feature of pattern or ornament.
The Act provides that “article” means any thing that is made by hand, tool or machine and includes manufactured products. The words “in a finished article” mean in a physical embodiment divorcing the design from a mere scheme or preliminary conception of an idea.
To ensure your rights are fully protected reach out to us for a detailed review of your situation.
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John McKeown
Loopstra Nixon LLP.
130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada
437 290-5960
This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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