Canadian industrial design marking: Three things you are probably doing wrong

Despite guidance from the Canadian Intellectual Property Office (CIPO), it seems that very few owners of registered Canadian industrial designs actually mark their products with the industrial design symbol. If you are thinking to yourself "there is an industrial design marking?" then you are probably not alone in missing out on the benefits afforded by this symbol.

Although a common mistake, choosing not to mark registered designs has legal consequences when it comes to enforcing your rights. This article will discuss three common pitfalls with respect to design marking in Canada.

You are probably not marking at all

If you are looking for justification as to why you should mark your designs, look no further than the Industrial Design Act, R.S.C., 1985, c. I-9 (the "Act") itself. In Canada, the law surrounding industrial design marking differs from the law that governs patent marking. While in patents, marking plays very little, if any, part in the determination of remedies for infringement, in design, marking can be a pivotal factor in ensuring the availability of monetary damages.

Section 17(1) of the Act provides a defence for those who are found liable for infringement. If a defendant is able to establish that they were not aware that the design was registered, the most that can be ordered against them for infringement is an injunction. Even if the infringement is clear, the plaintiff can recover no damages!

Section 17(2) eliminates the availability of this defence if the plaintiff establishes that the articles or their packaging were marked to indicate that they are the subject of a registered industrial design.

These advantages are clearly illustrated in Pylex Products Inc. vs. CTM international Hardware inc. (2017 QCCS 996). In that case, applying section 17(1), the plaintiff was denied recovery of punitive damages because there was no marking of the industrial design registration on the plaintiff's metal stakes. Had the plaintiff's industrial design registration been identified, this defence would not have been available. This decision was affirmed in 2019 (2019 QCCA 147).

You are not using the correct marking

If you are marking your articles, it is important to mark them correctly as the Canadian law is very specific. Typical mistakes include following the US requirements, or marking too broadly.

In the United States, designs are registered as "design patents" and marking requirements follow the rules related to utility patents. Patent marking in the US allows a plaintiff to establish that the defendant had been given "constructive" notice of the infringement. To satisfy these requirements, patented products are marked with the patent registration number, or product website where that information can be obtained, and the letters "PAT" or "PATENT", or "DES. PAT." in the case of design patents. 

In Canada, designs must be marked with the capital letter "D" in a circle and the name, or common abbreviation, of the current owner of the design. Capital "D" in a circle can be produced using character code 24B9 in MS Gothic font, or in certain other extended character sets.

The statute does not require an indication of the country, serial number or date of the registration, but it is good practice to include these, similar to a copyright or trademark notice.  So, for example:

You are not sure where to mark

Under section 17(2) of the Act, the industrial design marking must be placed on:

(a) all, or substantially all, of the articles to which the registration pertains and that were distributed in Canada by or with the consent of the proprietor before the act complained of; or

(b) the labels or packaging associated with those articles.

This is straightforward enough for physical goods but the wording of the provision does leave open the question of how to mark designs that do not have a physical form.  Despite other modernizations that came into force in 2018 in the Industrial Design Act, the marking provision was left untouched.

In the US, virtual marking is a legally accepted practice, both for physical goods and for virtual goods.  Using virtual marking for physical goods, a packaging or physical embodiment may be marked simply with a URL linking to a page with a full listing of applicable patent or design patent numbers.  For virtual goods, a link may be provided from the screen embodying the design to the virtual marking page.

In Canada, virtual marking is a grey area. Although this is better practice than no marking at all, unfortunately, there is no case law providing certainty at this juncture. Most likely, as jurisprudence evolves, the phrase "labels or packaging associated with those articles" will be interpreted liberally.  In the meantime, every effort should be made to provide some indicia of the Canadian design registration in a manner directly connected with the product itself (or the design, if it is virtual). For virtual goods (e.g. app interfaces registered in Canada as a "display screen"), good practice would dictate that the marking should be linked directly from the page of the app embodying the design.

Design holders should make best efforts to conform to this practice, and with all things design related, in times of doubt, seek legal advice!

This article was prepared with the assistance of articling student Madison MacColl.