A Guide to Industrial Designs (page 7 of 7)

Beyond the Basics

Other industrial design applications

Registration outside Canada

Registering your design with the Canadian Intellectual Property Office gives you exclusive rights in Canada only. To enjoy similar rights abroad, you must apply for them in each country separately. Most industrialized countries have equivalent industrial design protection. Links to foreign IP offices are available on the CIPO website (www.cipo.ic.gc.ca).

Note: If your Canadian industrial design application goes to registration prior to filing in another country, it could prevent you from receiving a registration in the other country. It is recommended that applicants inform themselves on the filing requirements of other countries in order to avoid this situation.

Priority

Procedures for obtaining international design rights are partially governed by an international treaty called the Paris Convention for the Protection of Industrial Property. The Paris Convention allows applicants to request convention priority. This means that someone who has filed for design registration in one Convention country has six months to file an application for the design in another country in order to be given the same rights as if he or she had filed in the second filing country on the original filing date.

For example, if you applied to register a design in Canada on January 5, 2006, you then have until July 5, 2006, to file for design registration in any other Convention country and claim convention priority in that country, i.e., receive the filing date of January 5, 2006.

Marketing rights

Now that you have taken steps to protect your creation, you will want to decide the best way to market it and turn a profit. As the proprietor (owner) of a registered industrial design, you have the exclusive right in Canada to make, import for trade or business, rent or sell a product incorporating that design.

You may also sell all or some of your rights to others (known as "assignment"), or you can simply authorize others to use the design subject to stated conditions (known as a "licence").

Assignment

An assignment occurs when you sell all or part of your rights to the design to another party. This party (or "assignee") assumes your ownership rights to make, import for trade or business, rent or sell, products to which the registered design is applied, and to authorize others to do so as well. Money is usually exchanged. The assignment must be in writing, but there are no standard forms for this. You may wish to ask a lawyer for help when preparing assignment documents.

The new owner should make sure that the assignment is recorded with the Industrial Design Office, which is done by sending a copy of the assignment document along with the fees. Details about fees are available on the CIPO website (www.cipo.ic.gc.ca/id).

Assignments may be recorded against both pending and registered designs.

Licences

In some cases, financial benefits can come from licensing a design. When you license your design, you allow someone else to use it with particular terms and conditions set out in a license agreement. You keep ownership and you can, in some instances, license to more than one other party. For example, you may license your design to one party for Ontario, one for Western Canada and another for the Maritimes. Similarly you could have an exclusive licence with one party for the first five years of protection, and another licence with a different party for the second five-year period. As with assignments, licences should be recorded. You may wish to ask a lawyer for help when preparing licensing agreements.

Marking a product

Although you do not have to mark your product to indicate it is registered as a design, marking does give you extra protection. The proper mark is a capital "D" inside a circle and the name, or abbreviation, of the design's owner on the article, its label or packaging.

If your product is marked and someone is charged with infringing (violating) your design, the court could award you a remedy such as financial compensation. If there is no mark, the only thing the court can do is forbid the other party from using your design (an "injunction").

Enforcing your rights

You may take legal action against anyone who infringes (violates) your design in Canada. You must take legal action within three years of the alleged infringement. The Industrial Design Office will not assist in legal proceedings on your behalf or police your rights in any way.