Nov 2018 Charity & NFP Law Update
Industrial designs are a form of intellectual property that protect the visual design of objects, such as shapes, configurations or ornaments applied to a finished article. Traditionally, industrial designs have been used to protect innovative designs, such as furniture, lighting, accessories, kitchen utensils, and appliances. However, what often remains overlooked is the role industrial design rights play in protecting the design features (i.e., the “look and feel”) of virtual designs, including websites, platforms, and mobile applications. As a result, charities and not-for-profits that have unique websites and platforms or that are creating mobile phone applications should consider industrial design registration in order to protect the design elements of these interfaces. For example, if a website offers a visually appealing layout, a streamlined experience, or unique icons, text, and graphics it may be protectable as an industrial design. Industrial designs offer a unique set of exclusive rights that charities and not-for-profits should be mindful of when considering their intellectual property rights.
Interestingly, on November 5, 2018 major changes to Canada’s industrial design regime were implemented. The new legislation aligns Canada’s industrial design regime with international practice in various aspects. One key change that may impact charities and not-for-profits is that Canada joined the Hague System, an international registration system for industrial designs that allows an applicant in one member country to obtain protection of an industrial design in all 69 member countries based on one single international application. Accordingly, charities and not-for-profits can now register industrial designs in all member countries simultaneously through one application. Another important change is that the term of protection for industrial designs has increased to the later of 10 years from registration or 15 years from the publication date. Previously, owners of protected designs were entitled to ten years of exclusive rights to the protected designs from the date of registration. Lastly, prior to the amendments, an organization that disclosed its design publicly had only 12 months to file an application for protection of its disclosed design. Now applicants essentially have an additional six months to file industrial designs.
Many within the sector are speculating that these changes will lead to an influx in industrial design applications in Canada. As a result, these changes serve as a timely reminder to charities and not-for-profits to consider industrial design registration when assessing their intellectual property portfolios.