Industrial Design Act

An Act respecting industrial designs Short title This Act may be cited as the Industrial Design Act. Definitions In this Act, article means any thing that is made by hand, tool or machine; (objet) Convention means the Convention of the Union of Paris made on March 20, 1883, including any amendments and revisions made from time to time to which Canada is a party; (Convention) country of the Union means a country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or a member of the World Trade Organization as defined in subsection 2(1) of the World Trade Organization Agreement Implementation Act; (pays de l’Union) design or industrial design means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye; (dessin) kit means a complete or substantially complete number of parts that can be assembled to construct a finished article; (prêt-à-monter) Minister means such member of the Queen’s Privy Council for Canada as is designated by the Governor in Council as the Minister for the purposes of this Act; (ministre) prescribed means prescribed by the regulations and, in relation to fees, includes determined in the manner prescribed by the regulations; (Version anglaise seulement) set means a number of articles of the same general character ordinarily on sale together or intended to be used together, to each of which the same design or variants thereof are applied; (ensemble) useful article means an article that has a utilitarian function and includes a model of any such article; (objet utilitaire) utilitarian function, in respect of an article, means a function other than merely serving as a substrate or carrier for artistic or literary matter; (fonction utilitaire) variants means designs applied to the same article or set and not differing substantially from one another. (variantes) Register The Minister shall cause to be kept a register called the Register of Industrial Designs, which shall contain the prescribed information and statements in respect of designs that are registered under this Act. Evidence The Register of Industrial Designs is evidence of its contents, and a copy of an entry in the Register is evidence of the particulars of the entry if the copy is certified as a true copy by the Minister, by the Commissioner of Patents or by an officer, clerk or employee of the Commissioner’s office. Admissibility A copy appearing to have been certified under subsection (2) is admissible in evidence in any court. Obvious error The Minister may, within six months after an entry is made in the Register of Industrial Designs, correct any error in the entry that is obvious from the documents relating to the registered design in question that are, at the time that the entry is made, in the Minister’s possession. Application to register design The proprietor of a design, whether the first proprietor or a subsequent proprietor, may apply to register the design by paying the prescribed fees and filing with the Minister an application that contains the name of the finished article in respect of which the design is to be registered; a representation of the design that complies with any prescribed requirements; and any prescribed information or statement. Substituted applicants The application shall, subject to any prescribed terms and conditions, be considered to have been filed by a person other than the person who filed it if, before the design is registered, it is established to the satisfaction of the Minister that the other person was the proprietor when the application was filed. Filing date The filing date of an application in Canada is the date on which the Minister receives the prescribed documents, information and statements or, if they are received on different dates, the latest of those dates. Examination of application for registration The Minister shall examine, in accordance with the regulations, each application for the registration of a design. [Repealed, 2014, c. 39, s. 105] Refusal of application The Minister shall refuse an application for the registration of a design and notify the applicant of the refusal if the Minister is satisfied that the design is not registrable. Registration of design If the Minister is not so satisfied, the Minister shall register the design and notify the applicant of the registration. Registrable design A design is registrable if the application is filed in accordance with this Act; the design is novel, within the meaning of section 8.2; the design was created by the applicant or the applicant’s predecessor in title; the design does not consist only of features that are dictated solely by a utilitarian function of the finished article; and the design is not contrary to public morality or order. Priority date The priority date of a design in an application for the registration of a design (in this section and section 8.1 referred to as the “pending application”) is the filing date of the application, unless the pending application is filed by a person who, on the filing date of the pending application, is a citizen or national of, or is domiciled in, a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union, and who has, or whose predecessor in title has, previously regularly filed an application for the registration of a design disclosing the same design in or for a country of the Union; the filing date of the pending application is within six months after the filing date of the previously regularly filed application; and the applicant has made a request for priority in respect of the pending application on the basis of the previously regularly filed application. Filing date of previously regularly filed application In the circumstances set out in paragraphs (1)(a) to (c), the priority date of the design is the filing date of the previously regularly filed application. Request for priority For the purposes of section 8, an applicant for the registration of a design may submit to the Minister a request for priority in respect of the pending application on the basis of one or more previously regularly filed applications. Requirements The request for priority shall be made in accordance with the regulations, and the applicant shall submit to the Minister the filing date, the name of the country or office of filing and the number of each previously regularly filed application on which that request is based. Request deemed never filed A request for priority is deemed never to have been filed if the request is not made in accordance with the regulations or if the applicant does not submit the information, other than the number of each previously regularly filed application, that is required under subsection (2). Withdrawal of request An applicant may, in accordance with the regulations, withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications. Multiple previously regularly filed applications If more than one application has been previously regularly filed either in or for the same country or in or for different countries, paragraph 8(1)(b) shall be applied using the earliest filing date of the previously regularly filed applications; and subsection 8(2) shall be applied using the earliest filing date of the previously regularly filed applications on which the request for priority is based. Previously regularly filed application deemed never filed For the purposes of section 8, a previously regularly filed application shall be deemed never to have been filed if on the filing date of the pending application, more than six months have elapsed since the filing date of the previously regularly filed application; before the filing date of the pending application, another application for the registration of a design, disclosing the design in the pending application applied to the same finished article, is filed by the person who filed the previously regularly filed application or by that person’s successor in title or predecessor in title, and is filed in or for the country where the previously regularly filed application was filed; and on the filing date of the other application referred to in paragraph (b) or, if there is more than one such other application, on the earliest of their filing dates, the previously regularly filed application has been withdrawn, abandoned or refused without having been made available to the public and without leaving any rights outstanding, and has not served as a basis for a request for priority in any country, including Canada. Novel design A design in an application for the registration of a design is novel if the same design, or a design not differing substantially from it, applied to a finished article that is the same as or analogous to the finished article in respect of which the design is to be registered, has not been disclosed, more than 12 months before the priority date of the design in the application, in such a manner that it became available to the public in Canada or elsewhere, by the person who filed the application, that person’s predecessor in title, or a person who obtained knowledge of the design in the application, directly or indirectly, from the person who filed the application or their predecessor in title; has not been disclosed by any other person, before the priority date referred to in paragraph (a), in such a manner that it became available to the public in Canada or elsewhere; and subject to the regulations, has not been disclosed in an application filed in Canada for the registration of a design whose priority date is before the priority date referred to in paragraph (a). Application deemed never filed For the purposes of paragraph (1)(c), an application referred to in that paragraph is deemed never to have been filed if it is withdrawn before the earlier of the date on which it is made available to the public under section 8.3 and the date on which a design in it is registered. Application and documents made available to public The Minister shall make available to the public, on the prescribed date, an application for the registration of a design and all documents in the Minister’s possession relating to the application and to the design’s registration. Non-disclosure Except with the approval of the applicant or the registered proprietor, the Minister shall, before the prescribed date referred to in subsection (1), refuse to disclose the application for the registration of the design and any information or document relating to the application or to the design’s registration. Limitation The prescribed date referred to in subsection (1) may not be later than the later of the date of registration of the design and 30 months after the filing date of the application for registration or, if a request for priority is made in respect of the application, the earliest filing date of a previously regularly filed application on which the request for priority is based. If a request for priority is withdrawn on or before the prescribed date, it shall, for the purposes of subsection (3) and to the extent that it is withdrawn, be deemed never to have been made. Withdrawn applications If an application for the registration of a design is withdrawn in accordance with the regulations on or before the prescribed date, the Minister shall not make the application and documents referred to in subsection (1) available to the public and shall refuse to disclose the application and documents, as well as any information relating to them. Prescribed date A prescribed date referred to in subsection (4) or (5) is to be no later than the prescribed date referred to in subsection (1). Exclusive right The registration of a design, unless shown to be invalid, gives to the proprietor an exclusive right in relation to the design. Duration of exclusive right Subject to subsection (3), the term limited for the duration of an exclusive right begins on the later of the date of registration of the design and the prescribed date, referred to in subsection 8.3(1), on which the application for the registration of the design is made available to the public; and ends on the later of the end of 10 years after the date of registration of the design and the end of 15 years after the filing date of the application. Maintenance fees The proprietor of a design shall, to maintain the exclusive right accorded by the registration of the design, pay to the Commissioner of Patents such fees, in respect of such periods, as may be prescribed. Expiration of term Where the fees payable under subsection (2) are not paid within the time provided for by the regulations, the term limited for the duration of the exclusive right shall be deemed to have expired at the end of that time. Using design without licence During the existence of an exclusive right, no person shall, without the licence of the proprietor of the design, make, import for the purpose of trade or business, or sell, rent, or offer or expose for sale or rent, any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied; or do, in relation to a kit, anything specified in paragraph (a) that would constitute an infringement if done in relation to an article assembled from the kit. Substantial differences For the purposes of subsection (1), in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account. Restriction on protection No protection afforded by this Act shall extend to features applied to a useful article that are dictated solely by a utilitarian function of the article or to any method or principle of manufacture or construction. First proprietor The author of a design is the first proprietor of the design, unless the author has executed the design for another person for a good and valuable consideration, in which case the other person is the first proprietor. Acquired right The right of another person to the property shall only be co-extensive with the right that the other person has acquired. Design transferable Every design, whether registered or unregistered, is transferable in whole or in part. Recording of transfer of application The Minister shall, subject to the regulations, record the transfer of an application for the registration of a design on the request of the applicant or, on receipt of evidence satisfactory to the Minister of the transfer, on the request of a transferee of the application. Registration of transfer of design The Minister shall, subject to the regulations, register the transfer of any registered design on the request of the registered proprietor or, on receipt of evidence satisfactory to the Minister of the transfer, on the request of a transferee of the design. Transfer void A transfer of a registered design that has not been registered is void against a subsequent transferee if the transfer to the subsequent transferee has been registered. Removal of recording or registration The Minister shall remove the recording or registration of the transfer of an application for the registration of a design or the transfer of a registered design on receipt of evidence satisfactory to the Minister that the transfer should not have been recorded or registered. The Minister is not authorized to remove the registration of a transfer of a registered design for the reason only that the transferor had previously transferred the registered design to another person. [Repealed, 1993, c. 15, s. 20] Action by proprietor or licensee An action for infringement of an exclusive right may be brought in any court of competent jurisdiction by the proprietor of the design or by an exclusive licensee of any right therein, subject to any agreement between the proprietor and the licensee. Proprietor to be a party The proprietor of the design shall be or be made a party to any action for infringement of the exclusive right. Power of court to grant relief In any proceedings under section 15, the court may make such orders as the circumstances require, including orders for relief by way of injunction and the recovery of damages or profits, for punitive damages, and for the disposal of any infringing article or kit. Concurrent jurisdiction The Federal Court has concurrent jurisdiction to hear and determine any action for the infringement of an exclusive right; and any question relating to the proprietorship of a design or any right in a design. [Repealed, 1993, c. 44, s. 167] Defence In any proceedings under section 15, a court shall not award a remedy, other than an injunction, if the defendant establishes that, at the time of the act that is the subject of the proceedings, the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered. Exception Subsection (1) does not apply if the plaintiff establishes that the capital letter "D" in a circle and the name, or the usual abbreviation of the name, of the proprietor of the design were marked on 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 the labels or packaging associated with those articles. Proprietor For the purposes of subsection (2), the proprietor is the proprietor at the time the articles, labels or packaging were marked. No remedy may be awarded for an act of infringement committed more than three years before the commencement of the action for infringement. [Repealed, 2001, c. 34, s. 52] [Repealed, 2015, c. 36, s. 45] Time period extended If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Minister, that time period is extended to the next day that is not a prescribed day or a designated day. Power to designate day The Minister may, on account of unforeseen circumstances and if the Minister is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Minister shall inform the public of that fact on the website of the Canadian Intellectual Property Office. Federal Court may rectify entries The Federal Court may, on the information of the Attorney General or at the suit of any person aggrieved by any omission without sufficient cause to make any entry in the Register of Industrial Designs, or by any entry made without sufficient cause in the Register, make such order for making, expunging or varying any entry in the Register as the Court thinks fit, or the Court may refuse the application. Costs In either case, the Federal Court may make such order with respect to the costs of the proceedings as the Court thinks fit. Questions to be decided The Federal Court may in any proceedings under this section decide any question that may be necessary or expedient to decide for the rectification of the Register. Jurisdiction The Federal Court has exclusive jurisdiction to hear and determine proceedings under this section. Application to alter design The registered proprietor of any registered industrial design may apply to the Federal Court for leave to add to or alter any industrial design in any particular not being an essential particular, and the Court may refuse or grant leave on such terms as it may think fit. Notice to Minister Notice of any intended application to the Federal Court under this section for leave to add to or alter any industrial design shall be given to the Minister, and the Minister is entitled to be heard on the application. Consequent rectification of register A certified copy of any order of the Federal Court for the making, expunging or varying of any entry in the Register of Industrial Designs, or for adding to or altering any registered industrial design, shall be transmitted to the Minister by an officer of the Registry of the Court, and the Register shall thereupon be rectified or altered in conformity with the order, or the purport of the order otherwise duly entered therein, as the case may be. Electronic form and means Subject to the regulations, any document, information or fee that is submitted to the Minister or the Commissioner of Patents under this Act may be submitted in any electronic form, and by any electronic means, that is specified by the Minister or the Commissioner of Patents. Collection, storage, etc. Subject to the regulations, the Minister and the Commissioner of Patents may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information. Definition of electronic In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means. Regulations The Governor in Council may make regulations governing titles of designs; respecting the form and contents of applications for the registration of designs, including the manner of naming finished articles, the manner of identifying features of shape, configuration, pattern or ornament of all or part of a finished article, and the manner of identifying that an application relates to only some of the features of shape, configuration, pattern or ornament that, in a finished article, appeal to and are judged solely by the eye, or to only some or all of those features of a part of a finished article; respecting the processing and examination of applications for the registration of designs, including the circumstances in which applications shall be deemed to be abandoned and the circumstances in which they shall be reinstated; respecting the circumstances in which paragraph 8.2(1)(c) does not apply in respect of a design that has been disclosed in an application for the registration of a design that was filed in Canada by a person referred to in subparagraph 8.2(1)(a)(i) or (ii); respecting the withdrawal of an application for the registration of a design and, for the purposes of subsections 8.3(4) and (5), prescribing the date, or the manner of determining the date, on or before which a request for priority or an application for the registration of a design shall be withdrawn; respecting the payment of fees and the amount of those fees; respecting the return of any fees paid under this Act; authorizing the Minister to waive, subject to any prescribed terms and conditions, the payment of a fee if the Minister is satisfied that the circumstances justify it; respecting the registration of sets and of variants of a design; respecting the correction of obvious errors in documents submitted to the Minister or the Commissioner of Patents, including the determination of what constitutes an obvious error, and the effect of the correction; respecting requests for priority, including the period within which priority shall be requested, the information and documentation that shall be submitted in support of requests for priority, the period within which that information and documentation shall be submitted, the withdrawal of requests for priority, and the correction of requests for priority or of information or documentation submitted in support of them and the effect of corrections on the application of section 8.3; respecting certificates of registration; respecting the recording of documents relating to a design; respecting the recording or registration of transfers of applications for the registration of designs or transfers of registered designs; respecting the provision, including in electronic form and by electronic means, of documents and information to the Minister or the Commissioner of Patents, including the time at which they are deemed to be received by the Minister or the Commissioner of Patents; respecting the use of electronic means for the purposes of subsection 24.1(2); respecting communications between the Minister or the Commissioner of Patents and any other person; for carrying into effect, despite anything in this Act, the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999, including any amendments and revisions made from time to time to which Canada is a party; and prescribing anything else that is to be prescribed under this Act and generally for carrying out the purposes and provisions of this Act. [Repealed, 1993, c. 15, s. 23] Definition of coming-into-force date In sections 30 to 32, coming-into-force date means the day on which subsection 104(2) of the Economic Action Plan 2014 Act, No. 2 comes into force. [Repealed, 2014, c. 39, s. 112] Prior applications — filing date An application for the registration of a design whose filing date, determined under this Act as it read immediately before the coming-into-force date, is before the coming-into-force date, shall be dealt with and disposed of in accordance with the provisions of this Act, as they read immediately before the coming-into-force date, other than sections 5, 13 and 20; and sections 5, 13, 21 and 24.1. Prior application — no filing date An application for the registration of a design that is filed before the coming-into-force date and that does not, on that date, have a filing date, determined under this Act as it read immediately before the coming-into-force date, shall be deemed never to have been filed. Registered designs Any matter arising on or after the coming-into-force date, in respect of a design registered before that date or a design registered on or after that date on the basis of an application whose filing date, determined under this Act as it read immediately before the coming-into-force date, is before the coming-into-force date, shall be dealt with and disposed of in accordance with the provisions of this Act, as they read immediately before the coming-into-force date, other than sections 3, 13 and 20; and sections 3, 3.1, 13, 21 and 24.1. For greater certainty, a regulation made under section 25 applies to an application referred to in section 30 and to a design referred to in section 32, unless the regulation provides otherwise.