Industrial design registration

How BC law treats it

Canada has no design patents. Product designs are protected by registration under the federal Industrial Design Act, RSC 1985, c I-9 and the Industrial Design Regulations, SOR/2018-120, administered by the Canadian Intellectual Property Office (CIPO). The Patent Act protects inventions, not appearance. The same federal rules apply across Canada, including in BC. To be registered, a design must be novel and must relate to visual features of a finished article, not to how it functions. There is a 12-month grace period: the applicant's own public disclosure within 12 months before the filing date (or priority date) does not destroy novelty, but disclosure by others does. Applications are examined, and the registration lasts until the later of 10 years from registration or 15 years from filing, subject to maintenance fees. The owner can sue for infringement in the Federal Court or a provincial superior court, such as the BC Supreme Court, against anyone who makes, sells or imports an article that does not differ substantially from the registered design. Under section 64 of the Copyright Act, RSC 1985, c C-42, copyright in an artistic work used as the design of a useful article reproduced in more than 50 copies is generally not enforceable against that use, so registration is often the only effective protection for mass-produced product designs. In Canada, applications are usually filed by registered patent agents, not patent attorneys.

What it means for your business

For BC consumer product, furniture, apparel accessory and hardware companies, a product's look can be its main selling point. Without an industrial design registration, copycats may be free to imitate a mass-produced design because copyright protection largely falls away. Founders who show a product at a trade show or on crowdfunding sites start the 12-month grace period clock and must file before it runs out. Registrations also add value in financing and sale due diligence. Example: A Vancouver company launches a distinctive cordless lamp on a crowdfunding site in March. It files an industrial design application with CIPO in January of the next year, within the 12-month grace period, and later uses the registration to stop an importer selling a near copy.

Risks and common mistakes

Searching for or filing a "design patent" in Canada, which does not exist. Publicly launching a product and missing the 12-month grace period for filing. Relying on copyright to protect the design of a mass-produced useful article. Seeking design protection for functional features that only a patent can protect. Forgetting to pay maintenance fees to keep the registration in force.