A recent shift in industrial design examination practice introduces new opportunities for architects, developers and property owners to protect their architectural designs. On June 14, 2024, the Canadian Intellectual Property Office (CIPO) revised its examination practice, extending industrial design protection to include designs applied to buildings or structures, including those constructed on-site.
Industrial Designs
The industrial design regime in Canada is governed by the Industrial Design Act. A design refers to the visual features of shape, configuration, pattern, or ornament that appeal to the eye when applied to a finished article. The design must be novel, meaning that it differs substantially from any previously disclosed designs, taking into account any priority dates and the one-year grace period provided in Canada. When registered, the owner has an exclusive right to prevent others from making, importing, selling, renting or offering for sale any articles to which the design has been applied, for up to 15 years from the application filing date.
CIPO Examination Practice
Before the 2024 update, CIPO interpreted a “finished article” more narrowly. The previous definition of a “finished article” excluded buildings and structures constructed on-site because CIPO required that the design be applied to buildings or structures capable of being preformed, portable and delivered separately to purchasers as finished articles, or in sections to be put together by a simple operation such as bolting. As a result, only structures pre-manufactured off-site or those that could be delivered in sections—such as modular homes or prefabricated components —could qualify for industrial design protection.
This interpretation left a gap for many architectural projects. Buildings constructed on-site could not benefit from industrial design registration, and were therefore primarily safeguarded under copyright law as architectural works.
The 2024 revision expands the scope of a “finished article” to cover buildings and structures, including those constructed on-site. This change means that the unique aesthetic features of a building constructed on-site— such as its shape, decorative facades, or any distinctive patterns—can now be registered as an industrial design, provided they are novel and are not dictated solely by a utilitarian function. The revised practice applies retroactively to all pending industrial design applications.
Industrial Design vs. Copyright Protection
While both copyright and industrial designs can protect aspects of an architectural design, they each serve different purposes. Understanding the difference can assist in making strategic decisions about how to protect such designs. Often, a combination of both can provide the most comprehensive coverage.
In Canada, copyright arises automatically when a work is created. It protects original artistic works like blueprints, models, architectural drawings, and buildings.[1]
Industrial designs, on the other hand, require the filing of an application and registration to obtain protection. It specifically covers the aesthetic appearance of a building, or in other words, the features that catch the eye and differentiate the design from others. It does not extend to technical or functional aspects of the building.
A building with a unique facade featuring intricate patterns or shapes may therefore be protected under both copyright (as an architectural work) and industrial design (with respect to its visual features).
Summary
With the change in CIPO’s examination practice, the unique visual aspects of a building, including those constructed on-site, can now be registered as an industrial design, providing architects and developers with another option for protecting their architectural designs.
If you have any questions about the revised practice or would like to explore options for protecting your architectural designs, please contact Ashley Chu at info@pckip.com.
Footnotes
[1] There are certain circumstances where copyright in a useful article will not being infringed, for example, where the article is reproduced more than 50 times. However, an architectural work that is a building or a model of a building is exempt from this rule.
PCK IP is a leading North American intellectual property firm based in Canada, specializing in the preparation, prosecution, and strategic management of patent and trademark portfolios for global markets. Our team of seasoned patent agents, engineers, scientists, and IP lawyers supports clients across diverse technologies, with expertise in coordinating cross-border IP strategies. Contact us today to explore how we can help secure and manage your intellectual property.
The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.