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Industrial design infringement

Furniture shopping can be a lot of fun. We often pick furniture for its functionality but also because it is aesthetically pleasing.

However, furniture is constructed based on someone’s design. If suddenly the same design shows up in a different store that may not have permission to reproduce the design, could the designer take legal action?

That depends.

Did the designer register his or her design?

The first question to ask is did the furniture designer register their design with the government under the Register of Industrial Designs? If not, they will be out of luck.

If the designer did register it and someone used the designs even though the original designer has a valid exclusive right to the design, the designer can now bring a legal action.

If you registered your design, you have 10 years of exclusive ownership over it which means nobody in Canada is allowed to:

  • Recreate the same or a similar design;
  • Make it and/or import it for the purpose of trade or business;
  • Sell, rent, or offer the article, or expose it for sale or rent if it is similar or identical to the registered design.

Though the exclusive ownership lasts for 10 years, you have to pay a renewal fee after six months of registration, as well as within the first five years of the exclusive ownership registration so that your ownership stays effective for the 10 years.

However, though you can register your design, you should be aware that after you have applied your design would be checked for accuracy. The government also checks their database to make sure that your design is original and is not the same or similar to another design in its database.

What allows the designer to bring a legal action for industrial design infringement?

There is no protection under the common law. However, there is protection under section 15 of the Industrial Design Act allows an owner of the design or exclusive licensee of the design to bring an action as long as they registered the design with the government.

The designer must bring the action within three years of the design infringement or the designer will not be able to take action.

What defences can someone use who was accused of infringing an industrial design?

There are few legal defences for infringing upon someone else's industrial design. One legal argument the court will consider is if the defendant in the action can prove to the court that at the time he or she was accused of unlawfully reproducing the design the defendant didn’t have grounds to suspect, or didn’t know, that the design was registered.

Though no major punishments will be issued against the defendant if he or she can prove they copied the design innocently, they will still be told to stop copying the design.

What remedies can the court order?

The court can order several remedies, which include:

  • An injunction;
  • The recovery of damages or profits, for punitive damages, and for the disposal of any infringing article or kit.

If you have registered your industrial design and the registration is valid, and you suspect or know someone has copied your work you should consult a lawyer.

Read more:

What is an industrial design?

Industrial Design Act