An industrial design is a shape, pattern, ornamentation or configuration (or any combination of these features) applied to a finished article that appeals to the eye. Examples of industrial designs include the shape of a flower vase, the pattern of treads on a tire, or an ornamentation or design applied to china dinnerware.

Two factors determine whether a specific design is registrable.

1. It must be an article capable of industrial exploitation and reproduction. This criterion excludes some designs which are random patterns with no two identical examples. The design must be fixed and not subject to more or less random variation.

2. It must be novel, in the sense that no one has ever made anything like it before. This standard needs to be used with some caution, because two items which are not the same may be sufficiently visually similar to give the effect of being the same.

Not all designs are registrable. Designs that are solely dictated by a function of the article, or a method or principle of manufacture or construction are not registrable. There are also certain classes of designs that are excluded from registration, since they have protection under the Copyright Act. These include:

a pictorial image applied to the face of an article;

* material that has a woven or knitted pattern of that is suitable for piece goods or surface coverings or for making wearing apparel;

an architectural work of art that is a building or a model of a building;

* a representation of a real or fictitious being, event or place that is applied to an article as a feature of shape, configuration, pattern or ornament;

articles that are sold as a set, unless more than 50 sets are made.

There can be an overlap in protection available. For example, a cup with a picture on it is potentially protectable in at least two ways: the shape of the cup is a design, while the picture is copyright.

WHAT IS A REGISTERED DESIGN?

A registered design is a legal agreement made between the proprietor of the design and the State.

The proprietor obtains an exclusive right in the design, which means the right to ask a court to stop others from using the design commercially for a set period of time. In Canada, this period is ten years. As a design can only be protected in the country in which a registration is issued, separate design registrations are required for each country.

The state gets the right to publish the design, thus making it available to other designers to consider. In Canada, the Designs Registry makes available copies of issued registered designs, but does note publish any listing of them. Other countries, such as the U.S.A. and West Germany, publish design directories.

WHO OWNS A REGISTERED DESIGN?

The owner of a design is described as its "proprietor". Ownership depends on the facts of each case. Generally speaking, the designer who creates a design during his own free time and with his own resources is the owner and proprietor of it. If the design is made during the course of employment, using the company's money and resources, the employer is the proprietor. There can be any number of other possible situations, which will usually be covered by some form of agreement entered into between the parties.

IS THERE ANYTHING A DESIGNER SHOULD AVOID DOING TO PROTECT HIS DESIGN?

Most importantly, before the design registration is made, a designer should not publish the design. In Canada and in the States, it complicates the design registration process and in some cases, it can make the design unregistrable. In other countries, the publication of a design can make it unregistrable.

If it is necessary to consult with others in making the design (for example to have some pottery fired), it is preferable that each person be informed that the matter they are dealing with is confidential.

WHO MAY FILE AN APPLICATION TO PROTECT A DESIGN?

Only the proprietor of a design may authorize the filing of a registered design application in Canada. If the proprietor is an individual, he may act on his own behalf. However, if he has no office or place of business in Canada, he must give the name and address of a representative for service. If the proprietor is a company or its equivalent, then it must be represented by an agent. Nearly all foreign countries require a non-resident applicant to use an agent.

In Canada and most other countries, patent agents deal with design registrations. In the U.S.A., only the creator of a design can apply, regardless of who owns the design.

HOW CAN A DESIGNER FIND OUT IF A DESIGN IS REGISTRABLE?

The main thing a designer needs to determine is if his design is truly novel. This can be approached in two ways. One way is to have searches made in the Designs Registry to see if there is a registered design that is the same. The second way is to review all of the literature available to the designer, such as trade catalogues, to find out what has been done before. If the design has not been done before, it is potentially registrable.

WHERE DOES THE FIRST APPLICATION HAVE TO BE FILED?

If the design is made in Canada, it can be filed anywhere in the world - there are about 100 countries with design registration systems. For most Canadian designs, the first application is filed in either Canada or the U.S.A. Filing first in the U.S.A. is slightly more costly.

If the design is made in the U.S.A., or if one of the creators of the design is a resident of the U.S.A., then the first application must be filed in the U.S.A.

HOW SOON CAN THE DESIGNER DISCLOSE THE DESIGN?

A design can be disclosed to others in confidence at any time. As soon as an application is filed, the designer or proprietor is free to disclose the design to others in Canada or elsewhere.

WHEN IS IT NECESSARY TO CONSIDER REGISTRATION IN OTHER COUNTRIES?

If the design is not published, than an applicant can delay registration as long as he wishes. However, there is always the risk that someone else will create the same design and publish it, or file an application for it.

If the design is published after an application is filed, then all other applications have to be filed within six months of the first application.

DO OTHER COUNTRIES PROTECT FUNCTIONAL DESIGNS A few countries, including Japan and West Germany, have a separate system used to protect what are usually called "utility models". No two countries interpret the distinction between appearance and function in the same way. This means that a design that is unregistrable in Canada because of its functionality can often be registered elsewhere.

WHAT HAPPENS AFTER AN APPLICATION IS FILED?

In both Canada and the U.S.A., the procedure is essentially the same. A Registry Office Examiner reviews the application to determine whether the various requirements have been met. The Examiner also searches the data available in the registry to determine whether the design is registrable. A dialogue then follows, usually by letter, between the Applicant and the Examiner to overcome any objections the Examiner may have. In the rare cases that this dialogue fails to resolve the issues, appeal procedures exist, up to the Supreme Court level. Generally, this dialogue takes from nine to eighteen months.

DOES ANYTHING HAVE TO BE DONE AFTER A DESIGN IS REGISTERED?

In order to keep a registration in force, renewal fees must be paid. In Canada, the registration is in force for five years and can be renewed once at any time within that period for a second five years. Other countries have their own renewal fees schedule and registration term.

Certain countries, including Canada, also require that articles made incorporating the design are adequately marked to show that the design is registered. If there is no indication on a product that it is protected in Canada by an industrial design registration, it can become very difficult to stop an infringer. All, or substantially all, of the articles sold, or the labelling and packaging accompany them, should show "D" followed by the name of the proprietor.