Industrial designs guide

From: Canadian Intellectual Property Office

Learn what industrial designs are, why they are important for business, and what makes them a key element of a comprehensive intellectual property strategy. Find out why you would want to register your industrial design, and how to apply for registration in Canada and abroad.

On this page

  1. What is an industrial design
  2. What to consider before filing an application
  3. Application requirements
  4. How to apply
  5. Examination and registration process in Canada
  6. How to apply for registration using the Hague System
  7. Additional information

1. What is an industrial design

An industrial design is about how something looks. It protects a product's unique appearance, not what it is made of, how it is made or how it works.

Industrial designs can be found in many everyday products, such as the unique contour of a car hood, the graphical user interface on a phone or the specific shape or pattern of your favourite shoes.

Important for successful businesses

You may have heard of the maxim "form follows function", i.e. that the function of a product should dictate the form it will take. Well, one of the objectives of industrial design is to have form and function work together, leading to products that are not only easy to use and make sense functionally, but are also distinctive and visually appealing.

Industrial design can give a product a competitive edge in the marketplace. To sell a product, there are multiple factors to consider, including price, functionality, reputation and its aesthetics. Consumers are often drawn to an eye-catching product and so accordingly, manufacturers put a lot of money and know-how into their industrial designs. An effective design will appeal to the consumer and even create an emotional connection between the consumer, the product, and the brand and can influence consumer behavior, ultimately supporting the marketing and sales of the product. This is why a novel design is considered to be valuable intellectual property.

The Canadian Intellectual Property Office (CIPO) conducted a study on the economic impact of industrial designs in 2017 and found that firms holding industrial design registrations have 16% greater revenue per employee, compared to firms without an industrial design registration. More information and results from this study can be found on page 26 of the IP Canada Report 2017.

What it protects

Most countries have intellectual property laws and rules that permit individuals and businesses to secure rights related to their industrial designs.

In Canada, you can secure these rights by registering your industrial design with CIPO. The Industrial Design Act confers exclusive right for the three-dimensional features of shape and configuration as well as the two-dimensional features such as pattern and ornament, including colour, applied to a finished article. You may obtain protection for the design of the entire finished article, or part of it. In Canada, this exclusive right can last for up to 15 years.

What is not protected by an industrial design

The following are not protected as industrial designs in Canada:

Reasons to register your industrial design

Stop your competitors from using your design

A registered industrial design provides the owner with an exclusive right to prevent others from making, selling and importing for commercial purposes in Canada an article that embodies a design which is the same, or substantially similar to the registered design.

A registration grants this exclusive right for up to 15 years, meaning you can defend your design against infringement for up to 15 years. For example, if you operate in the jewellery industry, and are granted an industrial design registration for the signature look of your earrings, then your competitors won't be able to sell earrings with a design that is identical or substantially similar to yours.

While CIPO grants industrial design registrations, it does not police exclusive rights or monitor the marketplace for potential infringement. If you identify a design that copies your registered industrial design, we recommend that you consult with an intellectual property professional on potential recourses.

Industrial design registration creates value for your company

In addition to preventing competitors from copying your design, a registration can be an important asset to your company. It can:

Attract investment – An industrial design registration, like other forms of intellectual property rights, can attract investors and business partners to your company. For smaller start-up businesses, the exclusive rights offered by registered intellectual property can be key assets and sometimes even more valuable than tangible assets like equipment or land.

Be licensed, sold or used to secure a loan – Owners of intellectual property rights may license, sell or use them to secure a loan as with any asset. This can provide an important source of revenue for your business.

Interaction of industrial design and other intellectual property rights

People occasionally confuse industrial designs with patents, trademarks or copyright. They are all rights granted for intellectual creativity and are forms of intellectual property. However, there are important differences:

These rights protect different aspects of your creation and a variety of individual rights can co-exist in a single innovation. For example, in a smartwatch:

As you see, intellectual property is everywhere, even in the same product. To protect and leverage your innovation, it is important to develop an intellectual property strategy and identify and register all your intellectual property assets.

2. What to consider before filing an application

Who can apply

The proprietor of an industrial design is the only person who can apply for its registration. The creator of an industrial design is the proprietor unless they were hired to create the design by another entity. In this case, the other entity is the proprietor of the design.

When to file

In considering when to file your application to register your industrial design, you may consider the following:

The Canadian industrial design regime is a first-to-file system.

Disclosure to the public

CIPO will only register a design if it is novel, meaning that the identical or substantially similar design has not been disclosed to the public, in Canada or elsewhere. If you have disclosed your design to the public, a 12-month grace period allows you to file your design with CIPO and the disclosure will not prevent registration.

Launch of the product

Applications are kept confidential until registration or up to 30 months after its date of filing or priority. Once that confidentiality period is expired, the contents of your application will become available to the public. You may wish to delay the registration of your design to ensure your product is ready to be launched at the same time.

Consider searching for similar designs

Before applying, a good first step is to do a search of existing industrial designs to assess whether your design is novel.

Canadian Industrial Designs Database
Searching through the Canadian Industrial Designs Database is simple and free of charge. It will show you designs that have been registered in Canada and will let you see how others have prepared their applications, including images. CIPO keeps records of all industrial designs filed and registered in Canada dating back to 1861.

You can search using the classification code, classification text, client reference number, court order number, description, finished article, interested parties, international registration number, national application/registration number, and proprietor.

WIPO Intellectual Property Digital Library
You can also search through intellectual property data collections hosted by WIPO.

Decide where you want to protect your industrial design

Industrial design rights are only valid in the country or region where they are registered. If you plan on seeking protection in multiple jurisdictions, you will need to register your industrial design in each country's or region's intellectual property office (IPO).

Where to apply should depend on where you want to acquire industrial design protection to support or expand your business. For more information on developing your intellectual property strategy, please consult CIPO's IP for Business page.

Choose a filing route

There are three routes available for Canadians and Canadian businesses to apply for industrial design registration:

CIPO

This is also known as the "national" route. If you choose to file an application through CIPO you may protect your design only in Canada.

Other Intellectual Property Offices

If you choose to file an application directly with a foreign IPO, your design will only be protected in that country.

Hague System for the International Registration of Industrial Designs

This is also known as the "international" route. If you choose to file an application through the Hague System, you may protect your design in multiple countries at the same time, including in Canada. Canada's major trading partners, including the United States, the European Union, Japan and South Korea are members, and Canada has been a member since . The Hague System means key benefits for applicants:

  1. One application, one payment, one currency and one place: Applicants can apply for industrial design protection in multiple countries through one application and pay fees in one currency through a single transaction with the World Intellectual Property Organization (WIPO).
  2. Simpler rights maintenance and management: Registered design owners have access to a streamlined mechanism for maintaining and managing industrial design rights in multiple jurisdictions through WIPO.

More information on the Hague System is available further in this guide. You may also consult WIPO's website, which provides excellent resources for prospective applicants.

Consider hiring an agent

Preparing and prosecuting an industrial design application in Canada is a complex process which requires knowledge of industrial design law and office practices. Prosecution involves corresponding with CIPO, taking actions within strict timelines and making any necessary changes to the application. Additionally, if you are filing your application elsewhere, you should understand the other jurisdiction's applicable legislation and requirements.

Should you be protecting only the shape? Should you disclaim part of your design or should you protect the whole design? An agent will make sure that your application is properly drafted so that your design is adequately protected. Hiring an agent is not mandatory but is recommended by CIPO. The vast majority of industrial design applications filed in Canada benefit from the services of an intellectual property professional.

If an agent is appointed, you must use that agent to prosecute your application. CIPO will only accept instructions from that agent to avoid receiving different or conflicting instructions. In order for an agent to be considered appointed, CIPO must receive a notice of appointment indicating the name and postal address of the appointed agent. Note that you may change agent at any time or also choose not to have one anymore.

3. Application requirements

CIPO does not require you to use a particular application form however, the following content is mandatory:

Name and postal address of the applicant

When doing business with CIPO you must provide your name and postal address. You may provide an address for correspondence that is different from your address of business.

If you appoint an agent, CIPO will send communications to that agent. If no agent has been appointed, CIPO will only communicate with you.

Name of the finished article

Your application must identify the "finished article" to which your design is applied. You should use the name generally known and understood by consumers (e.g. "car").

Representation of a design

CIPO has specific requirements for reproductions (drawings) and photographs that are presented in your application. Here are some key points to remember:

Fees

You must pay a fee to have your application examined by CIPO. You can pay by credit card (VISA, MasterCard or American Express), direct payment, deposit account, postal money order or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes.

Most common fees

The complete list of fees related to industrial designs is provided in the Tariff of Fees of the Industrial Design Regulations.

In addition to the above, the following optional content may also be applicable:

Descriptive statement

Your application may include a brief statement describing the representation or features of the design. This statement may also indicate if a particular feature is important to the design. For example, "The most significant feature of the design is the appearance of the rose at the base of the handle". Any feature of the design that is referenced in the descriptive statement must be visible in the reproductions or photographs.

The descriptive statement must not refer to a utilitarian function or a method or principle of manufacture or construction.

Statement of limitation

An application is deemed to relate to all of the features of shape, configuration, pattern and ornament shown in the representation of the design unless the application contains a statement limiting the design to one or some of these features. The statement of limitation must clearly describe which features are claimed and must not create alternatives that may lead to ambiguity as to the scope of the design.

For example, an acceptable statement of limitation would be: "The design is limited to the features of shape and configuration."

A statement may also indicate that the application relates only to part of an article and only to some of the features, for example: "The design is limited to the features of shape and configuration of the table top. The legs do not form part of the design." Instead of a statement of limitation, you may wish to limit your design by using dotted or broken lines. CIPO considers that an application does not to relate to a feature that is shown in the representation of the design in dotted or broken lines, unless it is indicated otherwise.

Priority claim

Canada is signatory to the Paris Convention for the Protection of Industrial Property (the Paris Convention). The Paris Convention allows applicants to benefit from a right of priority when filing an industrial design application in another Paris Convention member country. If you file an application for the same design in another Paris Convention member country within six months of the filing date of your earlier filing, you will get a priority date that is the same as the filing date that was given to your first application. This means that the novelty of your design will be assessed as of that earlier date.

For example, if you applied to register a design in the United States and received a filing date of , you have until to file for design registration in Canada and make a priority claim based on your earlier United States filing. In that case you would receive a priority date of .

Indication of divisional application

You may file a divisional application with CIPO for any design applied to a finished article that was disclosed in the original application on its filing date. The finished article must also have been disclosed in the original application. Divisional applications are available for both national and Hague applications.

To facilitate processing, it is strongly advised that you indicate that your application is a divisional when it is filed.

4. How to apply

You may apply for industrial design registration in Canada through:

If you are interested in applying for an industrial design registration, more information is provided in the Industrial Design Office Practice Manual.

5. Examination and registration process in Canada

Initial processing

CIPO will review your application to make sure you have met the basic requirements to establish a filing date. If you have met them, you will receive a Notice of Filing informing you of the filing date. The Notice of Filing also indicates your application number, which you can reference in subsequent correspondence. If the application is incomplete, you will receive an Omission Notice informing you that information is missing and that you have two months to provide the missing details.

Formality examination

After a filing date is established, your application will be classified according to the particular type of article to which your design is applied. An examiner will review your application to ensure all formalities are met and that the design, taking into account the name of the finished article and any statement, is sufficiently disclosed. This is done to conduct a novelty assessment and to ensure the application relates only to one design or variants (designs that do not differ substantially from one another).

Substantive examination

Once your application meets the formality requirements and the scope of your design is clear, your design will be compared with pending, registered and published designs in Canada and elsewhere, for any similarities. Your whole application will be reviewed with the relevant prior art, to determine whether your design is novel. After examination, your application will be either approved for registration, or you will receive an Examination Report outlining the examiner's objections to registration and indicating what information you need to add or what changes need to be made to your application.

If you receive an Examination Report, you must respond in writing within three months. In your response, you can amend your application to overcome the objections. If you do not agree with the objections, you can provide arguments. You may also contact CIPO for clarification should you have any questions about the Examination Report.

It is important to remember that if you make changes to a statement or to the representation of your design, whether voluntarily or in response to an Examination Report, you cannot change the design in any substantial way. If you do, these changes will be rejected.

Refusal

If, after responding to multiple Examination Reports, your amendments or arguments fail to overcome the objections, CIPO will issue a Notice of Possible Refusal maintaining the objections to registration. You have three months from the date of the notice to ask the Patent Appeal Board to review the decision. If no response is received, your application will be considered for refusal. If your application is refused, you may appeal the refusal to the Federal Court of Canada.

Registration

Once your application is approved, it will proceed to registration as soon as possible. CIPO will issue a Notification of Industrial Design Registration that includes a copy of the application, including the representation of the design, a Registration Details Report and a Notice to Proprietors regarding the maintenance of exclusive right. Information about the registered design will be entered in the Register of Industrial Designs, a certified copy of which is admissible as evidence in any court.

The term for the exclusive right granted by the registration of your design begins on the date of registration and ends on the later of the end of 10 years after registration and 15 years from the Canadian filing date. In other words, you may get between 10 to 15 years of exclusive right. To maintain the exclusive right for its complete duration, a maintenance fee must be paid.

Maintenance

To maintain your exclusive right to the design beyond the initial five years, you must pay the maintenance fee of $350 no later than five years after the registration date. There is also an option to maintain your exclusive right within six months from the expiry of the initial five years, but you will have to pay an additional late fee of $50. After that six-month period, you can no longer maintain the exclusive right, which will expire on the end of the five-year term.

6. How to apply for registration using the Hague System

Using the Hague System for the International Registration of Industrial Designs

Registering your design with CIPO gives you an exclusive right in Canada only. Generally, to get similar rights in other countries, you must apply in each country separately. However, since , you may wish to use the international route of the Hague System. Through this system, applicants can apply for industrial design protection in multiple countries through one application and pay fees in one currency through a single transaction with WIPO.

Initial processing

The application process starts with the filing of an international application through the International Bureau (IB) of WIPO. An international application can be filed in English, French or Spanish, either on paper or through WIPO's eHague. An international application may include up to 100 different designs, belonging to the same class of the International Classification for Industrial Designs (the Locarno Classification) and must contain the following information:

Formality examination

After your application is filed, the IB will verify that it meets the formal requirements prescribed by the Hague Agreement. For example, was a representation of the design provided? If so, is it of sufficient quality? If the formality requirements are not met, the IB will invite you to correct any irregularities within three months. If the formality requirements are met, a filing date – generally the date on which the IB received the application – will be issued. The IB will send you a certificate of International Registration; your design will be recorded on the International Register and published in the International Designs Bulletin.

Publication in the International Designs Bulletin acts as a notification to each designated country. At that time, offices of countries for which domestic law provides for a substantive examination of a design may now begin their substantive examination.

Substantive examination

CIPO will conduct an examination on substantive requirements only, in order to determine whether the Hague Application complies with the requirements of the Industrial Design Act and Industrial Design Regulations, just as it would for a national application.

CIPO will verify that the design, taking into account the name of the finished article and any statement, is sufficiently disclosed. CIPO will also assess the novelty of design. If the scope of the design is unclear or if it isn't novel, a Notification of Refusal will be issued. If the design is registrable, a Statement of Grant of Protection will be issued.

The Notification of Refusal and the Statement of Grant of Protection

The Notification of Refusal is recorded on the International Register, published on WIPO's Global Design Database and communicated to you by the IB. It is accompanied by an Examination Report, which will outline the objections to registration. This is not a final refusal.

If you disagree with the objections, a response may be submitted directly to CIPO within three months. Note that the same remedies to an Examination Report are available for both national and Hague Applications: you can amend your application to overcome the objections or, if you do not agree with the objections, you can provide arguments. If the refusal is maintained, CIPO may send you subsequent Examination Reports and, eventually, a Notice of Possible Refusal, until a final Refusal is issued and puts an end to the examination.

Figure 1
figure 1
Figure 1 - Text version

This figure demonstrates how the refusal and grant of protection process work for a Hague Application. After WIPO has communicated the International Registration to CIPO, any Statement of Grant of Protection or Notification of Refusal issued by CIPO will be sent to WIPO, which will in turn inform the Holder. In the case of a Refusal, the Holder must send a response directly to CIPO.

If the refusal is overcome or if the Hague Application was registrable from the start, CIPO will issue a Statement of Grant of Protection to the IB, which will in turn inform you that Canada has granted protection to the design. From that point on, the Hague Application is known as a Hague Registration and the date of registration of the design is the date of the Statement of Grant of Protection. The Statement of Grant of Protection, along with a copy of the Hague Registration, will be made available for consultation on WIPO's Global Design Database.

The term of protection, for a Hague Registration, begins on the date of its registration in Canada and ends on the later of the end of 10 years after registration in Canada or the end of 15 years after the date of International Registration.

Maintenance

In respect of Canada, the International Registration is valid for an initial period of five years from the date of international registration and may be renewed for two additional five-year periods. Within five years of the date of international registration, you must make a request for renewal and pay the required fees to the IB. The payment will cover the remainder of the term of protection available, but nevertheless, you are required to renew again within ten years from the date of international registration to ensure that the international registration remains maintained in respect of Canada. For that second renewal request, no fees are required.

Other actions: Transfers, securities and licences

Transfers of ownership affecting any Hague applications or registrations must be recorded through WIPO. Note that WIPO does not record security agreement and licences. However, any person may provide CIPO with copies of a licence and/or a security agreement that relates to a Hague Application or Hague Registration. CIPO will keep these documents on file and make them available to the public.

7. Additional information

Commercializing your design

As the proprietor of a registered design, you have the exclusive right in Canada to make, import for trade or business, rent or sell an article to which the design, or a design not differing substantially, is applied.

As described previously in this guide, in addition to preventing others from copying your design, you can also use your registration to attract investment. Your registration may also be sold or licensed. By selling your design, you are transferring your rights to another individual or organization. By licensing your design, you allow someone else to use it with particular terms and conditions set out in a licence agreement.

Here are some resources on commercialization available to you.

Enforcing your rights

Does CIPO monitor the market for infringement?

While CIPO grants industrial design registrations, it does not police exclusive rights or monitor the market for potential infringement. If your industrial design registration is infringed, you may take legal action against the infringer. Note that no remedy may be awarded by a Court if the infringement was committed more than three years before the commencement of the legal action. If you identify potential infringement, we recommend that you seek legal counsel for advice on potential recourses.

Here are some resources on enforcement/infringement available to you.

How to show your products are registered industrial designs

It is recommended to mark your products to show that their design(s) are registered as an industrial design. The proper mark is a capital "D" inside a circle and the name or abbreviation of the design's owner on the article, its label or packaging.

Marking your product could help you if ever you need to go to court because someone has infringed on your design. In accordance with the Industrial Design Act, an infringer may argue that that they were not aware, and had no reasonable grounds to suspect, that the design was registered. However, if your products are marked correctly, you will be able to establish that the infringer should have known the design was registered. Consequently, you may be eligible for remedies such as damages or profits.

The IP Hub

For more information on the four stages of the IP journey and to connect with services in the marketplace, visit the IP Hub.

Date modified: