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WHAT IS THE LENGTH OF THE PROTECTION PROVIDED BY AN INDUSTRIAL DESIGN? WHEN DOES A DISTINGUISHING GUISE APPLY?
Often seemingly similar types of intellectual property actually differ. Knowledge about the intricacies of various forms of intellectual property can help one protect and prosper from their ideas, innovations and new products.
Two forms of intellectual property that are frequently confused are industrial designs and distinguishing guises. Both distinguishing guises and industrial designs protect a product’s visual features but the similarities end there.[1]
Distinguishing guises are not a unique category of intellectual property but are a type of trademark. Hence, general trade-mark policies will usually apply. Distinguishing guises solely protect the “shaping of goods or their containers” and “a mode of wrapping or packaging goods”.[2] They would not protect a unique design painted on a product.
In contrast, industrial designs stand-alone from other types of intellectual property and are governed by separate legislation.[3] Industrial designs exist for ten years and protect a broader array of visible characteristics.[4] Under Canadian law, an industrial design, “means any combination of those features that, in a finished article, appeal to and are judged solely by the eye.”[5] For example, an industrial design could protect “a design on a spoon”.[6]
Additionally, industrial designs have differing registration criteria. The Trade-marks Act requires that owners have used distinguishing guises enough, “that they have become distinctive at the date of filing an application for its registration.”[7] However, Canada does not require that industrial designs be made public prior to registration.[8]
A brief overview of distinguishing guises and industrial designs show that while superficially similar, there are significant differences. Knowledge of these differences can help an entrepreneur correctly protect their products, articles and innovations.
[1] Trade-marks Act, RSC 1985, c T-13, s 2(c) [Trade-marks Act]; Industrial Design Act, RSC 1985, c I-9, s 2. [Industrial Design Act]
[2] Trade-marks Act, supra note 1. Under section 13(2)(b), distinguishing guises cannot “interfere” with “utilitarian features”.
[3] Industrial Design Act, supra note 1.
[4] Canadian Intellectual Property Office, “A Guide to Industrial Designs” (5 February 2016), Government of Canada (website), online:< http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02300.html>. [A Guide to Industrial Designs]
[5] Industrial Design Act, supra note 1 at s 2.
[6] A Guide to Industrial Designs, supra note 6.
[7] Trade-marks Act, supra note 1 at s 13(1)(a).
[8] A Guide to Trademarks, supra note 3.