On June 14, 2024, the Canadian Intellectual Property Office ("CIPO") introduced a change to its practice with respect to industrial designs applied to buildings and structures. Namely, CIPO now takes the position that buildings and structures may be eligible for design protection.1 CIPO's recent extension of industrial design protection to buildings and structures may impact parties who are involved in the design and construction of buildings and structures, including architects, engineers, developers, and property owners. Understanding how the recent change in practice with respect to the industrial design system in Canada complements the existing Canadian copyright regime is key for governing existing and future relationships between these parties.
Canada's Industrial Design Regime
Industrial designs in Canada are governed by the Industrial Design Act (the "IDA").2 To be granted protection, an industrial design application must be prepared and filed in accordance with the IDA. Once the application is filed, it is reviewed by CIPO and, if the formal and substantive requirements for a design are met, the industrial design is registered. The owner of the industrial design registration then enjoys protection of the design for a period that is the longer of 10 years from the date of registration or 15 years from the filing date of the application.3
An industrial design is registrable in Canada if: (a) the application is filed in accordance with the IDA; (b) the design is novel; (c) the design is created by the applicant or the applicant's predecessor-in-title; (d) the design does not consist only of features that are dictated solely by a utilitarian function of the finished article; and (e) the design is not contrary to public morality or order.4
To be novel, the design must not have been previously disclosed in such a manner that it became available to the public.5 Notwithstanding the foregoing, persons who publicly disclose their own industrial design have a 12-month grace period to submit an application therefor to CIPO without jeopardizing their ability to register their design, despite the prior disclosure.6
Broadening Protections to Buildings and Structures
The recent change in practice follows a comprehensive review of Canada's industrial design framework and the relevant case law.7 Notably, this change in practice brings Canada in line with jurisdictions like the United States where design patents for buildings and other on-site structures have long been available – such as the Statue of Liberty which was protected by a design patent in 1879.[8
The recent change in practice also applies retroactively to pending industrial design applications, regardless of their filing date.9 No additional criteria specific to buildings and structures are required, and these applications will be processed similarly to all other applications.10
Given that an industrial design registration provides a monopoly on reproducing the protected industrial design, industrial design protection may prove valuable to parties who construct buildings and structures with particularly distinctive and notable designs. After all, the owner of an industrial design registration controls the use of such protected design and influences any proliferation or restriction of the design in other buildings and structures.
Industrial Design Revisions & The Existing Copyright Regime
In Canada, architectural works enjoy protection under copyright law. The Copyright Act extends copyright protection to works that are original artistic and creative expressions fixed in a material form11 and that are produced through an exercise of skill and judgment.12 When it comes to buildings and structures, such works may include architectural plans and drawings, as well as the artistic expression embodied in the building itself. In contrast, the Canadian industrial design system can be used to protect the unique visual appearance or ornamentation applied to a building or structure, including its shape, configuration, pattern, or ornament. As such, industrial design protection may overlap with certain design features protected by copyright, but may also apply to certain design features not currently protected by copyright. It is accordingly prudent for property owners, developers, architects, and engineers to turn their minds to ownership and control of industrial design rights in addition to copyright when entering into contracts for the design and construction of buildings and structures.
Key Takeaways
CIPO's recent change in practice with respect to industrial designs applied to buildings and structures may have several implications for parties involved in the design and construction of buildings and structures as well as for the owners of such buildings and structures. These implications include the following:
- As noted by CIPO, "buildings and structures [...] may be acceptable finished articles to which a design can be applied."13
- When multiple parties are involved in designing a building or structure, it would be prudent of the involved parties to clarify in writing which party owns the industrial design in the building or structure.
- Parties involved in designing and constructing buildings and structures must be aware of existing third-party industrial designs, and any potential risk in infringing any third-party industrial designs.
Footnotes
1 Canadian Intellectual Property Office, "Revised practice on designs applied to buildings or structures" (14 June 2024), online: [CIPO Revised Practice on Designs.
2 Industrial Design Act, RSC 1985, c. I-9.
3 IDA, s 10(b).
4 IDA, s 7.
5 IDA, s 8.2(1).
6 IDA, s 8.2(1)(a).
7 CIPO Revised Practice on Designs.
8 United States Design Patent Number 11,023.
9 IDOP June 2024, s. 13.02.03.04.
10 IDOP June 2024, s. 13.02.03.04.
11 Copyright Act, RSC 1985, c. C-42, s. 5(1).
12 CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13.
13 CIPO Revised Practice on Designs.
The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.
© McMillan LLP 2024