As an innovator, what are your options when it comes to protecting your intellectual property rights to your product? It is easy to become fixated on a single form of protection, particularly when it addresses the most important aspects of your product. This often results in rights holders pursuing a single form of protection, without considering whether other forms are available and advantageous.

In this article, we will discuss three different forms of intellectual property protection in Canada: patents, trademarks and industrial designs.

Why multiple forms of IP protection are better than one

While in some cases, a single form of protection may be enough, in many cases, inventors are best served by seeking multiple forms of protection. These combined rights serve to maximize the scope of protections around a novel product, allowing rights holders to enforce against many more forms of infringing activity. It is vital for inventors to look at all forms of protection early on. IP agents and lawyers can identify the best forms of protection available for a new product and put together a comprehensive filing and enforcement strategy as early as possible.

There are many types of products that can benefit from multiple forms of protection, whether the product relates to new guitar strings made of a new compound, or a new software. A new compound for guitar strings can benefit from a patent to protect the compound and/or method of making the guitar string, and an industrial design and a trademark to protect the visual aspects of the new guitar string. A software product can benefit from a patent to protect the function of the software, an industrial design to protect a unique user interface of the software product and a trademark to protect any branding associated with the software product.

Protecting how it works with patents

A patent can be obtained for any new product, composition, machine, process or for an improvement to an existing form of any of these. A patent generally protects the function, properties and/or the method of manufacturing a product, and is valid for a non-renewable period of 20 years. An issued patent provides the exclusive right to prevent others from making, using and selling the patented invention for the 20-year period.

In some cases, a patent term may be extended under Canada’s recently implemented Patent Term Adjustment (Beyond the standard patent term | Gowling WLG and Canada's Patent Term Adjustment | Gowling WLG).

It is important to seek out patent protection as early as possible. Canada has a ‘first-to-file’ system and provides a one-year grace period for filing a patent application. This means that a patent application should be filed early on and that an inventor has one year from the day the invention is disclosed to the public* to file a patent application.

However, not every jurisdiction provides such a grace period, and so if an innovator is looking to protect their product via patents in multiple jurisdictions, it is important to speak to a patent agent to determine any time constraints.

While patents are ideal for obtaining protections to the function, properties and/or method of manufacturing a product, it may not necessarily protect the appearance of the product. The appearance of the product may help distinguish it from others on the market. Trademarks and industrial designs can provide protection for the unique appearance of a product. As described further below, these additional regimes can be used sequentially to provide longer-term protections of a product’s unique appearance.

Building brand recognition with trademarks

Trademarks are a sign or combination of signs used to by a person to distinguish their goods or services from those of others in the marketplace. In other words, trademarks are a kind of shortcut that allow consumers to easily identify the source of the goods or services that are associated with the trademark.

In many cases, innovators are often aware of the availability and importance of securing trademark rights for “traditional trademarks” for use with their goods, such as brand names (e.g. the brand name “Nike”) and logos (e.g. the “Nike Swoosh” logo). However, many innovators are unaware that other “non-traditional” aspects of their goods may also be viable candidates for trademark registration (also known as “trade dress registrations” in jurisdictions outside Canada).

If we consider the guitar string example, a trademark registration may be obtained for a guitar string that is uniquely braided and dyed, so long as other traders in the guitar string market do not already employ the same or similar braided and dyed guitar string design. Once obtained, the trademark registration provides the exclusive right to prevent others from registering and using the same or similar design. What’s more, unlike patents, trademark registrations can be renewed indefinitely beyond their initial registration period of 10 years.

This all sounds great, however it’s important to note that to obtain a registration for a non-traditional trademark in Canada, applicants need to submit evidence to prove that their trademark had acquired distinctiveness as of the filing date.

At a high level, this generally requires an applicant to provide evidence that it has achieved a large volume of sales and advertising across Canada within at least three years prior to the filing date of the trademark application. This means that the design will have to be out on the market to accumulate enough sales for at least three years before filing a trademark application for the design.

This can be a problem, as during these three years, the inventor will not have a registered trademark to enforce their design. To prevent the design from being disclosed to the public without any IP protection, an inventor should look to an industrial design application to cover at least this three-year gap.

Safeguarding the look with industrial designs

While often overlooked, industrial designs (known as “design patents” in jurisdictions outside of Canada, including the United States) can be obtained to protect the appearance of a product.

Industrial designs protect the form, shape, colour and ornamental features of a product. An industrial design application can be filed for a 3D design showing a full product or particular parts of a product, such as the aforementioned guitar string that is uniquely braided and dyed. An industrial design application can also be filed for a 2D design such as a user interface of a product or a website design for the product. The industrial design application can be used to protect such a design during at least the three-year period needed to accumulate enough sales in Canada to prove acquired distinctiveness to obtain a trademark registration.

A single industrial design application can be filed disclosing one or more variants of the design. Depending on the examination of the application, each variant can be separated out into a divisional application. Divisional applications can also be obtained for any non-claimed designs disclosed in the originally filed industrial design application. However, there are strict time constraints for filing divisional applications.

Once an industrial design is registered, the registration provides the exclusive right to prevent others from making, importing, and selling a product to which a design is applied that is not substantially different from the registered industrial design for up to 15 years. No further renewal is available after this 15-year period.

Similar to patents, it is important to seek out industrial design protection early on. Canada has a ‘first-to-file’ system and provides a one-year grace period for filing an industrial design application. This means that an industrial design application should be filed as early as possible and the inventor has one year from the day the design is disclosed to the public* to file an industrial design application.

However, not every jurisdiction provides such a grace period, and so if an innovator is looking to protect their product via industrial designs in multiple jurisdictions, it is important to speak to a patent agent to determine any time constraints.

The case for a comprehensive IP strategy

As we have seen, innovators are often entitled to many more types of intellectual property rights protections than one might initially believe. Together, these different regimes can allow innovators of different types of products to protect many different aspects of their products, both in the short term and the long term.

However, it is vital that each intellectual property application contains the correct content and is filed at the appropriate stage of the product’s development, marketing and sale lifecycle to ensure there are no gaps in the innovator’s protections. Furthermore, the rights available to each innovator may vary depending on the nature of their innovation.

For these reasons, it is extremely important for innovators to consult an IP agent or lawyer at an early stage to develop an intellectual property strategy that is tailored to their individual needs and situation.

* A patent agent can identify what is considered a public disclosure of an invention and/or an industrial design.