Industrial Designs and the Clash of Titans

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An industrial design is a valuable business asset that can complement, and sometimes replace patents.   While a patent covers the function of a product, the design protects the visual features of the product. Furthermore, a design registration costs a fraction of obtaining a patent

In particular, an industrial design is the visual features of shape, configuration, pattern or ornament—or any combination of these features—applied to a finished article made by hand, tool or machine. The shape of a perfume bottle, the sleek design of a car, and the elegant shape of a tablet are all examples of an industrial design.

There are many advantages to registering an industrial design, for sole inventors, start-ups, and even “titans”:

Sole inventor

Sharon had become frustrated with the hockey bags that she had bought for her son over the years. It seemed each new model lacked some useful features. Wouldn’t it be nice to have a water bottle holder on the side, or a special compartment for skates, or strategic placements of pockets and zippers?  Sharon started thinking about patenting her idea, and then learned of the enormous costs.  In addition, she probably could not get a patent for her hockey bag, as the features she thought of (i.e. placement of compartments, zippers, etc) were not inventive. However, an IP professional recommended filing an industrial design application for the hockey bag, with an eye to making it visually distinct from bags already on the market. Sharon saved thousands of dollars by filing an industrial design application for her product. She plans to license it to a large-scale company.

Start-up

Valerie and her close-knit team have developed hair products made entirely from natural ingredients. They have performed preliminary market analysis, and found favourable reaction. They decide that the best way protect their invention is through a patent. However, the company may also want to look into marketing their hair products in distinctively-shaped bottles or containers.  The design registration of the distinctive bottle has nothing to do with what is inside.  Rather, it protects the visual features of the bottle against reproduction by another party.  In time, the distinctive bottle design will be associated with the contents inside.     

The Titans

The staggering financial pie of the tablet market has resulted in a clash of titans Apple® and Samsung®  have used a combination of patents and industrial design registrations to provide IP protection for their products and have gone head-to-head in litigation in several countries. In particular, Apple has sued Samsung for infringing a number of its design patents for its tablets (aka the IPad®). While the suits have been successful in some jurisdictions (and are under appeal by Samsung®), the UK court ruled, in part, that the Samsung® tablet was not as “cool” as the Apple design, and thus, did not infringe Apple’s design. This decision is also under appeal.

Conclusion

An industrial design registration is a legal document that prevents others from making, using or selling the visual features of your design. The registered design must be original and cannot be obvious in view of pre-existing designs or products.  Canada grants a maximum of 10 years for the legal protection of a registered design.

Be careful about publicizing your design prior to filing a design application. While the US and Canada provide a one-year grace period, other jurisdictions are not so forgiving.  You should file your application before going to the trade show, handing out samples, seeking crowd-source funding, or publicizing your design in other ways.

In summary, consult an IP professional to see if an industrial design is an appropriate tool for your IP needs.

By Sheema Khan, Ph.D.

Patent Agent, Shapiro Cohen

For information on placing a sponsored article on OBJ.ca, please contact Terry Tyo at 613-238-1818, ext. 268.

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