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Protecting the Design That Sets Your Product Apart


BCBusiness + Oyen Wiggs Green & Mutala LLP

Credit: iStock

Apple versus Samsung case proves that industrial design ownership should never be overlooked

In today’s competitive and fast developing economy, companies large and small are fundamentally aware of the importance of protecting their Intellectual Property (IP), such as patents, trademarks, copyright, know-how and trade secrets.

Equally important, but often not as well known by Canadian companies, is industrial design, which protects the decorative or esthetic aspects of a product. 

“My view is that industrial design is underutilized,” says Roni Jones, a lawyer and associate at Oyen Wiggs, a boutique IP law firm. “Many people aren’t aware of the importance of registering for industrial design, especially when esthetic design may be what differentiates them from their competitors.” 

Industrial design protection is a type of IP right that gives its owner the exclusive right to make, sell, and use articles that make use of the protected design. 

One of the most notable industrial design cases (design patents in the U.S.) occurred after Apple Inc. launched the iPhone. The tech giant secured several registered designs, including the rectangular front face with rounded corners and a raised rim. Apple faced off against Samsung Electronics Co., Ltd., and the courts found that Samsung was infringing on three of Apple’s designs patents. 

Tech companies often forget about the value of their industrial designs, but they can be very valuable as shown in the case of Apple and Samsung, which argued over the iPhone design with large amounts of money at stake,” Jones explains. “IP protection can provide a company with a significant competitive advantage.”

The rapid growth of smartphone ownership within the last decade has allowed some creative developers to achieve incredible success. Often, what separates a winning app from the competition is the app’s Graphical User Interface (GUI). Industrial design can protect this vital, but often overlooked, aspect. 

“An industrial design application consists of a series of professional drawings that outline your design from essentially every angle and view,” explains Jones.

Although an industrial design application can be done without legal assistance, Jones doesn’t recommend it. First off, a lawyer will search multiple databases around the world to see if anyone else has a design like yours. 

“Companies can file an application through the Canadian Intellectual Properties Office (CIPO), however, there are many nuances along the path to filing,” says Jones. “If you make a mistake early on, you could lose your rights. A knowledgeable lawyer can guide you through the process to ensure your rights are protected.”

There are three main steps in the process:  the initial processing when you file your application with the CIPO;  the examination, that’s when an examiner will conduct a search to validate that your idea is original and not the same or so closely resembling another that it is confusing to someone; and, finally, if your application is approved, it goes through to registration. The whole process takes between one to two years. Once you’ve been approved, you will have exclusive rights to that design for 15 years. 

“You should not disclose or offer to sell your industrial design before applying if you want to preserve your right to seek protection in all countries,” says Jones, “however, unlike many countries, Canada does provide a one year window to file after such a disclosure or sale.” 

Created by BCBusiness in partnership with Oyen Wiggs Green & Mutala LLP