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17 September 2007
Industrial design registration is an often overlooked tool for protecting intellectual property. An industrial design registration can cover any of the visual features of an article, such as the shape, pattern or ornamentation. Recent registrations have covered such diverse items as an electronic icon, the sole of a shoe, a faucet, a mobile phone, a golf club head and an electrical connector.
An industrial design registration can be tailored to protect only the features of an article that are important. A mobile phone provides a good example of different options that can be protected. When a mobile phone is closed, the sleek outer shape is visible. This outer shape of the mobile phone is an industrial design. When the mobile phone is opened, the numerical keypad and the screen are visible. The shape and configuration of the keypad is an industrial design. When the mobile phone is used, electronic icons appear on the screen corresponding to menu options. The ornament of each electronic icon is an industrial design. These three industrial designs - the outer shape, the shape and configuration of the keypad and the ornament of each electronic icon - can be registered separately or in any combination.
In addition to the merits of registering industrial designs in their own right, an industrial design registration can complement other forms of IP protection such as patent and trademark protection.
In general terms, a patent can be used to protect the function of an article, whereas an industrial design registration protects the appearance. For quick-to-market items, such as consumer gadgets, the patent process may seem slow and expensive. In addition, the appearance of such gadgets can play as important a role in sales as their function. Obtaining an industrial design registration is typically much less expensive and quicker than obtaining a patent.
Filing an industrial design application concurrently with a patent application can put a form of protection in place faster. An industrial design registration alone may even be sufficient to provide the level of protection needed. Even items such as an electrical connector, which may at first instance appear purely functional, will usually have some aspects of appearance that are not purely functional and so can be protected by an industrial design registration.
One key area in which an industrial design registration can complement trademark registration is in the protection of the shape of a container or packaging for an article. For example, a company has developed a new bottled water which will be sold in a uniquely shaped bottle. The brand and the label design can be registered as trademarks, but what about the shape of the bottle? Under the Trademarks Act, the shape of the bottle will be considered a "distinguishing guise". For a distinguishing guise to be registered under the Trademarks Act, it must have been on the market long enough to be recognized as identifying the bottled water. There is no such requirement in the Industrial Design Act. An industrial design application can be filed immediately. Later, once the required distinctiveness has been acquired, a distinguishing guise registration can be obtained under the Trademarks Act.
When evaluating IP protection options, it is wise to remember the option of an industrial design registration.
For further information on this topic please contact Christine N Genge at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or by fax (+1 613 232 8440) or by email (email@example.com).
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