April 08, 2017
The Canadian Intellectual Property Office (CIPO) recently announced six new office practices in relation to industrial designs. Among these, the new practices of permitting color and animation as design features could significantly expand the scope of registrability of industrial designs in Canada. This is a welcome change but also not without pitfalls.
CIPO now takes the position that color may form part of a combination of features that constitute a design. Up until the announcement of this new practice, registrable features in Canada may only be features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye, namely those explicitly listed in section 2 of the Industrial Design Act (the "Act"). Under the new practice, CIPO will accept color as registrable subject matter of an industrial design. In doing so, color will be permitted to be an additional feature in combination with the features of shape, configuration, pattern or ornament and any combination thereof.
However, to include color as a feature, the following should be noted. First, color may not be a feature by itself. Second, if color forms part of the design, the description must state that color forms part of the design. Third, any drawings or photographs that show a color design must be filed in paper form and in color, even though CIPO may display only a black-and-white version online, and annex a black-and-white version to the certificate of registration.
In addition to color, CIPO now also accepts computer-generated animated industrial designs for registration. Under this new practice, a computer-generated animation, e.g., an animated GUI, an animated menu item, an animated icon, or an article ornamented with a computer-generated animation feature, may be incorporated into a design and become registrable subject matter. This category of designs can be very useful to computer software companies, advertising companies and conference organizer companies, among others.
An animation is a series of frames. Under the new practice, to register an animated design, the application will need to include a sequence of drawings to show individual frames that form the animated design at a sequence of time positions. The sequence of frames, i.e., an animated design, will be examined as a single design. Previously, each frame was examined as an individual design, which may quickly become very expensive for an applicant, because it would require a large number of design applications for a single animated design.
With these changes, applicants may obtain better and improved protection for industrial designs in Canada, and extend protection to designs that were not registrable previously. Nevertheless, CIPO cautioned that "In the event of any inconsistency between this practice notice and the applicable legislation, the legislation must be followed." This is a good advice to follow. Color and animation features, although now recognized by CIPO as registrable subject matter, may not be consistent with the Act, or the Industrial Design Regulations (the "Regulations") made under the Act, or both.
For example, under the Act, "color" is not listed as among registrable features. If a design, by reason only of the color feature, "is not identical with or does not so closely resemble any other design already registered as to be confounded therewith" and even if the design is registered, a court may still invalidate the design because it would otherwise be identical, or substantially similar, to other registered design(s). Further, the Regulations require only documents that may permit direct reproduction in black-and-white. This calls into question whether any color drawings submitted (in paper format) may achieve the desired protection for the color feature. Similarly, animation is not a feature recognized under the Act. As is known, to an eye, a sequence of frames is not the same as an animated sequence of frames. The speed of animation also may distinct one design from another. A sample of animated design is not submittable under the Regulations, thus rendering it difficult to put on records the animated design to be protected.
These inconsistencies and/or incompatibilities of the new practices with the legislation may catch the unwary by surprise. Such issues would reveal themselves only at the time when it is too late, i.e., at the time of enforcement, typically years later, when it is no longer possible to remedy any mistake made at the time of application. It is not unknown that courts in Canada have in the past invalidated patents after issuance for not following the legislation during the application stage, despite the practices of the CIPO having been followed faithfully.
In view of the inconsistencies and/or incompatibilities, it is advisable that, while one would still take advantage of these new practices, extra care be taken when preparing applications for designs that include such features. It is important that prudent measures be taken to improve the chances of any registration of such designs being upheld by a court. For example, one may consider filing additional design applications for certain features that would be registrable prior to the change as a back-up, so that valid design registrations would still be available should all registrations obtained under the new practices be declared invalid.
Dr. Sean X. Zhang is an IP Partner at Dale & Lessmann LLP, a full service business law firm in Canada. To speak with Dr. Zhang, please call 416-369-7808 or send an e-mail message to him at email@example.com.