Legal: IP protection for buildings and structures

Photo: © snowing12 / Adobe Stock

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. Specifically, CIPO now takes the position that buildings and structures may be eligible for design protection.

This recent extension of industrial design protection to buildings and structures may affect parties who are involved in their design and construction, including engineers, architects, developers and property owners. Understanding how this change in practice—with respect to the industrial design system in Canada—complements the existing Canadian copyright regime will be 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 (IDA) of 1985, last amended in 2018. To be granted legal 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. If the formal and substantive requirements for a design are met, then the industrial design is registered.

The owner of the registration then enjoys protection of the industrial design for a period of 10 years from the date of registration or 15 years from the filing date of the application, whichever is longer.

An industrial design is registrable in Canada if all of the following requirements are met:

• the application is filed in accordance with the IDA.
• the design is novel.
• the design is created by the applicant or the applicant’s predecessor-in-title.
• the design does not consist only of features dictated solely by a utilitarian function of the finished article.
• the design is not contrary to public morality or order.

To be novel, the design must not have been previously disclosed in such a manner that it became available to the public. Notwithstanding the foregoing, persons who publicly disclose their own industrial design have a 12-month grace period to submit an application for it to CIPO without jeopardizing their ability to register their design, despite the prior disclosure.

Broadening protection

The recent change in practice follows a comprehensive review by CIPO of Canada’s industrial design framework and the relevant case law. Notably, the change brings Canada in line with other jurisdictions, like the U.S., where design patents for buildings and other on-site structures have long been available. By way of example, the Statue of Liberty was protected by a design patent back in 1879!

The change in practice also applies retroactively to pending industrial design applications, regardless of their filing date, as per Canada’s Industrial Design Office Practice Manual (IDOP), which was also updated in June. No additional criteria specific to buildings and structures are required and these applications will be processed similarly to all other applications.

Given that a registration provides a monopoly on reproducing the protected industrial design, the change in practice may prove valuable to parties that construct buildings and structures with particularly distinctive and notable designs. After all, the owner of an industrial design registration controls the use of the protected design and can influence any proliferation or restriction of the design in other buildings and structures.

Revisions and the existing copyright regime

In Canada, architectural works have already long enjoyed protection under copyright law. The Copyright Act of 1985 extends protection to works that are original artistic and creative expressions fixed in a material form and are produced through an exercise of skill and judgment, as noted in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13.

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 already protected by copyright, but may also apply to other design features not currently protected by copyright. It is accordingly prudent for engineers, property owners, developers and architects to turn their minds to ownership and control of industrial design rights in addition to copyright when entering contracts for the design and construction of buildings and structures.

Key takeaways
As mentioned, 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 include the following.
First, as noted by CIPO, “buildings and structures may be acceptable finished articles to which a design can be applied.”

Secondly, when multiple parties are involved in designing a building or structure, it would be prudent of the professionals involved to clarify in writing which party owns the industrial design for the building or structure.
Finally, parties involved in designing and constructing buildings and structures must also be aware of existing third-party industrial designs and any potential risk in infringing upon them.

Editor’s note: This article, which appeared in the November/December 2024 issue of Canadian Consulting Engineer, is based on the following bulletin:

Alex Buonassisi, based in Vancouver, is an associate who runs a broad intellectual property (IP) practice for McMillan LLP. Pablo Tseng, also based in Vancouver, is a partner, IP lawyer and trademark agent at McMillan. Annik Forristal, based in Toronto, is a partner and group head of McMillan’s national infrastructure and construction group, specializing in municipal land use and development. For more information, contact them at [email protected], [email protected] and [email protected].