Version of November 4, 2024
In force since November 5, 2018
|
The Manual was last updated on November 4, 2024. To learn about what has changed, please consult Annex B.
|
|
The Manual is also available in PDF format under the drop-down menu “More” located above the navigation menu on the left, or in accessible format.
|
The Industrial Design Office Practice Manual (the Manual) provides information on the operational procedures and examination practices of the Industrial Design Office of the Canadian Intellectual Property Office (CIPO).
Practices expressed in the Manual reflect the Industrial Design Office’s interpretation of the Industrial Design Act
[1]
(the Act or IDA), the Industrial Design Regulations
[2]
(the Regulations or IDR) and jurisprudence as of the date of the last update. While this Manual provides information on current office practice, it is not binding on the Industrial Design Office. In the event of any inconsistency between the Manual and the applicable legislation, the legislation must be followed.
This Manual replaces the Industrial Design Office Practice Guide dated May 2, 2017, and has been updated to reflect changes to the Act and the Regulations, which came into force on November 5, 2018. The Manual will be updated periodically to reflect changes to the statutory, regulatory and jurisprudential framework governing industrial design rights in Canada. For information on the change history, please consult Annex B of this Manual.
Many of the practices outlined in this Manual were developed to support Canada’s accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs
[3]
(the Hague Agreement), which establishes an international registration system – the Hague System – that allows industrial designs to be registered in multiple countries or jurisdictions through a single streamlined process. Other provisions have been introduced to modernize Canada’s industrial design regime by updating, clarifying and codifying aspects of the industrial design framework.
The Manual is structured in three parts:
Industrial Design Office Practice Manual
Part 1 – Practices applicable to all applications and registrations
Section 1 – Communications with the Industrial Design Office
1.01 – Address for correspondence
1.02 – Physical delivery to designated establishments
1.03 – Registered Mail™ and Xpresspost™ services of Canada Post
1.05 – Electronic communications to the Industrial Design Office
1.05.01.01 – Industrial Design E-Services application
1.05.01.02 – Industrial Design General Correspondence application
1.05.01.03 – Industrial Design Maintenance Fees application
1.05.02 – Electronic file formats
1.06 – Electronic communications from the Industrial Design Office
1.06.01 – Specifying a preferred method for receiving communications
1.06.02 – CIPO’s E-Mailbox application for industrial designs
1.06.02.01 – Configuring access and permissions for user accounts
1.08 – Communications with the Industrial Design Office
1.09 – Communications from a third party
1.10 – Material not in English or French
Section 2 – Agents and representation
2.02 – Revocation and change of agent
2.02.01 – Request for revocation
2.03 – Change of name or address of agent
3.01 – Non-application to Hague applications or registrations
3.02 – Request for recordal or registration of a transfer
3.04 – Removal of a recordal or registration of a transfer
Section 4 – Licenses and security agreements, change of name or address
4.01 – Licenses and security agreements
4.02 – Change of name or address
4.02.01 – Hague applications or registrations
5.02 – Fee adjustment of January 1, 2024
5.04.02 – Delay of registration service provided
Section 6 – Access to applications and related documents
6.02.01 – Ordering copies from the Client Service Centre
6.02.02 – Application made available on WIPO’s Digital Access Service
6.03 – Exception for Hague applications or registrations
Chapter 2 – Application procedures and requirements
Section 7 – Filing date of an application
7.02 – Divisional applications
Section 8 – Application content and requirements
8.03 – Information and fee required
8.04 – One design or variants per application
8.05 – Representation requirements
8.05.01 – Specific requirements for photographs and reproductions
8.05.02 – Fully disclose the design
8.05.03.01– Insufficient quality of reproductions
8.05.03.02 – Use of background
8.05.04 – Combination of photographs and reproductions
8.05.05.02 – Transparency and translucency
8.05.05.03 – Indefinite length and/or width and variable length in a portion of the article
8.05.05.04 – Articles of indefinite length or width with a constant cross-section
8.05.05.05 – Articles of indefinite length or width with a repeating surface pattern
8.05.05.06 – Articles of indefinite length or width with repeating 3D features
8.05.05.07 – Articles of indefinite length and width with a repeating surface pattern
8.05.05.08 – Articles of variable length in a portion
8.05.05.09 – Variable length in a portion that has repeating surface pattern
8.05.05.10 – Variable length in a portion that has repeating 3D features
8.05.05.11 – Cross-sectional views
8.05.05.12 – Enlarged fragmentary or magnified view
8.05.05.13 – Environment views
8.05.05.14 – Contrasting tones
8.05.05.15 – Open and closed positions
8.05.05.16 – Extended/retracted views
8.05.08 – Computer-generated animated designs
8.06 – Application deemed to relate to all features shown
8.06.01 – Statement of limitation
8.06.02 – Design applied to part of the article
8.06.02.01 – Statement to limit the design to part of the article
8.06.02.02 – Dotted or broken lines to limit the design to part of the article
8.06.02.03 – Colouring to limit the design to part of the article
8.06.02.04 – Blurring to limit the design to part of the article
8.06.02.05 – Boundary line to limit the design to part of the article
8.06.03 – Optional descriptive statement
8.07.01 – Request for priority
8.07.02 – Priority request requirements
8.07.03 – Withdrawal of a request for priority
8.07.04 – Impact on the date on which an application is made available to the public
8.07.05 – Correction to a request for priority
8.07.07 – Non-application to Hague applications
8.07.08 – Request for priority documents
8.07.08.01 – WIPO’s Digital Access Service
8.07.08.03 – Consequence for non-compliance
8.07.09 – Search based on priority
8.08 – Divisional applications
8.08.01 – Divisional applications
8.08.03 – Deadline to file a divisional
8.08.04 – Deemed actions in relation to request for priority
9.01 – Classification standard for industrial designs
Section 10 – Advanced examination
Section 11 – Delay of registration
11.01.01 – Non-application to Hague applications
11.03 – Withdrawal of a delay of registration
Section 12 – Withdrawing an application
12.02 – Impact on the date on which the application is made available to the public
Section 13 – Industrial design subject matter
13.02 – Registrable subject matter
13.02.01 – “Features of shape, configuration, pattern or ornament”
13.02.02 – “and any combination of those features”
13.02.03 – “in a finished article”
13.02.03.01 – Definition of “finished article”
13.02.03.02 – Name generally known and understood by the consumer
13.02.03.03 – Component parts of an article
13.02.03.04 – Designs applied to buildings or structures
13.02.04 – “appeal to and are judged solely by the eye”
13.03 – Unregistrable subject matter
13.03.01 – Solely Functional Designs
13.03.02 – Design contrary to public morality or order
14.01.01 – Response time and extension of time
14.01.02 – Examination - Relevant Applications
14.01.02.01 – Applications that cannot be disclosed
14.01.02.02 – If assessment of priority claim is necessary for novelty
Section 15 – Abandonment and reinstatement
Section 16 – Novelty assessment
16.01.02 – Priority date of the design
16.01.03 – Features of the design
16.01.04.01 – Exclusions from prior art
16.01.05 – Comparison of the prior art with the applied for design
16.02 – Search based on date of priority
16.02.01 – Language requirements
16.02.02 – A supported priority claim
Section 17 – Amendments to an application
17.02 – Limitations on amendments
17.02.01 – Modify the identity of the applicant
17.02.02 – Add a representation of a design
17.02.03 – Change a design or a statement
17.02.04 – Add an indication of divisional application
Section 18 – Final Examination Report, review, refusal and appeal
18.01 – Final Examination Report
18.02 – Review by a subject-matter expert and Refusal
18.03.01 – National applications
Chapter 4 – Registration and publication
Section 19 – Registration and exclusive right
19.02 – Duration of exclusive right
19.02.01 – Duration: National registrations
19.02.02 – Duration: Hague registrations
19.04 – The Register of Industrial Designs
19.04.01 – Hague registrations
19.05 – Correction to a registration
19.06 – Rectification and alteration
19.06.01 – Defendant or respondent in an action or application
19.06.02 – Personal service on the Minister or the Attorney General of Canada
19.06.03 – Separate requirement to give notice to the Minister
19.06.04 – Federal Court judgments
19.06.05 – Non-application to Hague registrations
Section 20 – Applications and information made available to the public
20.01 – Prescribed date for making the application available to the public
20.01.01 – Applications made available to the public
20.01.02 – Documents relating to multiple applications
20.01.03 – Non-application to Hague applications
20.01.04 – Withdrawn applications
20.02 – Changes made to the date of priority
20.03 – Canadian Industrial Designs Database
20.03.01 – Applications made available online
20.03.03 – Hague Express database
Section 21 – Maintenance of exclusive right
21.01.01 – Payment of the maintenance fee
21.02 – Non-application to Hague registrations
Part 2 – Practices in respect of Hague applications and registrations
Chapter 5 – Filing an international application and designating Canada
Section 22 – Entitlement to file
22.01 – Eligible Hague System users
22.02 – Eligible designated countries
Section 23 – How to file an international application
23.02 – Examination of formalities
Section 24 – The International Register and Bulletin
24.01 – Publication of international registrations
24.02 – Copies of Hague applications and registrations
Chapter 6 – Examination and registration of Hague Applications
Section 25 – Hague Applications
25.01 – International registration deemed to be a Hague application
25.02 – Divisional application resulting from a Hague application
25.03 – Filing date of a Hague application
Section 26 – Notification of Refusal
26.01 – Examination report through a Notification of Refusal
26.01.01 – Courtesy copy of Notification of Refusal
26.01.02 – Objection in relation to Class 32
26.02 – Time period for the Industrial Design Office to issue a Notification of Refusal
26.03 – Response to a Notification of Refusal
Section 27 – Hague registration
27.01 – Statement of Grant of Protection
27.01.01 – Courtesy copy of Statement of Grant of Protection
28.01 – Appeal to the Federal Court
28.01.01 – Respondent in an appeal
28.01.02 – Personal service on the Minister or the Attorney General of Canada
28.01.02.01 – Service of the notice of appeal
28.02 – Communication to the International Bureau
29.01 – Jurisdiction of the Federal Court
29.01.01 – Federal Court Judgments
29.02 – Communication to the International Bureau
Chapter 7 – Other information pertaining to Hague applications or registrations
Section 30 – Request for priority
30.01 – Request made through the International Bureau
30.02 – Correction of a request for priority
30.03 – Withdrawal of a request for priority
Section 31 – Transfer of an international registration
32.01 – Correction by the International Bureau
32.02 – Refusal of the correction
Section 33 – Maintenance of a Hague registration
33.01 – Request for maintenance
33.03.01 – Renewal request and payment
Part 3 – Transitional measures
Chapter 8 – Transitional provisions: Act
34.01.01 – Duration of exclusive right
34.02.01 – Section 5: examination
34.02.02 – Section 13: assignments and transfers
34.02.03 – Section 20: clerical errors
34.02.04 – Section 21: time period extended
34.02.05 – Section 24.1: electronic form and means
Section 35 – Applications without a filing date
35.01 – Cannot establish filing date
Section 36 – Applicability of the former Act to registered designs
36.01 – Applicable sections of the former Act
36.02.01 – Section 3: Register of Industrial Design
36.02.02 – Section 13: assignments and transfers
36.02.03 – Section 20: clerical errors
36.02.04 – Section 21: extension of time
36.02.05 – Section 24.1: electronic form and means
Chapter 9 – Transitional provisions: Regulations
37.01 – Current Regulations applicable
37.02.04.01 – Delay of registrations and associations
37.02.07 – Exclusion from prior art
37.02.08 – Applications made available to the public
37.02.09 – Maintenance and term of protection
Mail intended for the Industrial Design Office must be addressed to:
Industrial Design Office
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A 0C9
Documents, information or fees delivered to the above address are deemed to have been received on the actual date of their delivery if they are delivered when CIPO is open to the public (8:30 a.m. to 4:30 p.m. (Eastern Time) Monday to Friday).
Documents, information or fees delivered at a time when CIPO is closed to the public will be deemed to have been received on the day on which CIPO is next open to the public. Please be advised that once CIPO receives correspondence it cannot be returned to the sender, even if the sender states that the correspondence was sent in error. All material must be addressed to the “Industrial Design Office” and enclosed in a sealed envelope.
As of August 16, 2021, CIPO no longer accepts physical delivery of documents, information or fees, to designated establishments that are regional offices. All material should be submitted electronically where possible or delivered directly to the Industrial Design Office at the address indicated in section 1.01 of this Manual.
Although physical delivery to designated establishments that are regional offices is no longer accepted, the Registered Mail™ and Xpresspost™ services of Canada Post remain designated establishments through which documents, information or fees intended for the Industrial Design Office may be delivered.
CIPO considers that documents, information or fees delivered through these services are received on the day indicated on the mailing receipt from Canada Post, provided that CIPO is open to the public on that day. If CIPO is closed to the public on that day, the documents, information or fees will be deemed to be received on the day when CIPO is next open to the public.
Documents, information or fees may be submitted by physical delivery of an electronic medium directly to CIPO. These documents, information or fees will be deemed to have been received on the day on which they are delivered, as described in sections 1.01, 1.02 or 1.03 of this Manual, as applicable.
All electronic mediums must be free of worms, viruses or other malicious content. Files with malicious content will be deleted.
The Industrial Design Office will accept the following types of electronic mediums: CD-ROM,
CD-R, DVD, DVD-R, and USB stick. See section 1.05.02 of this Manual for information on the acceptable electronic file formats.
Documents, information or fees may be sent by using the online services identified below or by facsimile. Documents, information or fees submitted by these electronic means are deemed to have been received on the day on which CIPO receives them (Eastern Time). Accordingly, the filing date of an application filed using online services or facsimile will be the date on which all required information was received by CIPO whether it is open to the public or not.
Communications may be sent via CIPO’s website by accessing the following web pages:
Please note that the use of online services, including the E‑mailbox application for industrial designs, requires a valid e-mail address and an account with Innovation, Science and Economic Development Canada (ISED), known as a “My Canada Business Account” (formerly “My ISED Account”). If you do not already have a “My Canada Business Account”, visit the login page to create one.
The Industrial Design E-Services application may be used to file an industrial design application through a step-by-step process or by using a template or data from a previously filed application.
This online service also provides a secure, simple and fully integrated form to respond to office actions or file amendments to existing industrial design applications. This E-Amendment functionality is integrated with the internal systems within the Industrial Design Office. In order to maintain the confidentiality of industrial design applications, only an authorized user will be able to see the content of the application when they file an amendment. A user who is not authorized will still be able to file an amendment, but will not be able to see the content of the application. Authorizations and permissions can be managed using CIPO’s E-Access application for industrial designs.
An authorized user may also use the Industrial Design E-Services application to make the following requests:
The Industrial Design General Correspondence application may be used to send general comments or questions to the Industrial Design Office. It may also be used to file instructions with respect to a specific application or registration. Where a communication in respect of a specific application relates to a transaction listed in section 1.05.01.01 of this Manual, it is recommended to use the Industrial Design E‑Services application rather than the General Correspondence application.
The Industrial Design Maintenance Fees application may be used to pay the maintenance fee for industrial design registrations. See section 21 of this Manual for more information on the maintenance of the exclusive right.
The acceptable file formats for documents submitted electronically via the website are WPD, DOC, DOCX and PDF.
The acceptable file formats for the representation of a design are PDF, JPEG, PNG, TIFF, and GIF. The file size limit is of 60 MB for PDF and 10 MB for the other file formats. Dimensions of the scanned/stored images must match those of the paper requirements, namely 21.59 cm by 27.94 cm (8.5 in by 11 in) and be of a resolution of at least 300 dpi. Any representation of a design not meeting minimal requirements will be automatically converted.
Communications in black and white may be sent by facsimile to the following numbers:
Communications in colour must be sent to the following number:
Note that the model of facsimile is a Xerox C505/X and that this information may be needed to ensure a successful colour transmission.
Communications sent to any other number will be considered not to have been received by CIPO. The facsimile electronic transmission report will constitute acknowledgment of receipt from CIPO.
Please note that confidentiality of the facsimile transmission process cannot be guaranteed and that CIPO strongly discourages the use of a computer facsimile interface or internet-based facsimile services due to technical issues with reception.
If there is a fee associated with the communication, the preferred method of payment must be prominently displayed on the Fee Payment Form to ensure expedient processing.
Communications from the Industrial Design Office may be made available electronically through CIPO’s E-Mailbox application for industrial designs. E‑Mailbox allows applicants to access communications quickly and efficiently via an online platform, providing an alternative to paper-based correspondence. Access rights to electronic communications, including granting access to other users, can be managed through the new CIPO’s E-Access application for industrial designs.
The applicant may specify a preferred method for receiving communications from the Industrial Design Office, either paper or electronic. This can be done in a cover letter accompanying the application or, if filed online, by selecting a preferred method of correspondence in the appropriate section of the filing process.
If paper correspondence is preferred, the applicant will receive communications from the Industrial Design Office on paper. When the Industrial Design Office receives a paper application, it will also continue to communicate by paper unless the application clearly indicates a preference for communications to be made available electronically.
If electronic correspondence is preferred, communications will be made available electronically on CIPO’s E-Mailbox application for industrial designs. Please note that an email address is required to use this service.
Should the applicant wish to change its preferred method for receiving communications, this can be done by informing the Industrial Design Office in writing or through CIPO’s Industrial Design General Correspondence application.
Should the applicant indicate that electronic correspondence is preferred; communications will be made available electronically on CIPO’s E-Mailbox application for industrial designs.
Any communication made available by the Industrial Design Office to the applicant using CIPO’s E-Mailbox application will be deemed to have been sent to the applicant. The Industrial Design Office will use the E-Mailbox application only if the applicant has consented to receiving communications by that means.
Once a communication has been made available by the Industrial Design Office on the E‑Mailbox application, the applicant will be notified of that fact via an email sent to the email address of record.
Please note that the applicant cannot use the E‑Mailbox application to respond to communications from the Industrial Design Office. Any communication to the Industrial Design Office must be made by paper, through the online services identified in section 1.05.01 of this Manual or by facsimile.
To maintain the confidentiality of industrial design applications and to ensure only authorized individuals are able to access communications in the E‑Mailbox, access and permissions must be configured for each user account.
Access and permissions can be managed using CIPO’s E-Access application for industrial designs. Through the E-Access application, a user is authenticated and can grant or remove user access rights to the E‑Mailbox. Note that law firms have a unique E-Mailbox for all their respective files, and access rights can be granted to different agents and staff using the E‑Access application.
Should you encounter any difficulties with electronic applications or if you require help setting-up your account, getting authorized or managing user permissions, please send an email to: Industrial Design Office IT Inquiries or contact CIPO’s Client Service Centre.
If a deadline ends on one of the following days or on a day that is designated by the Minister, that deadline will be extended to the next day on which CIPO is open to the public:
Not all provincial and territorial holidays are days where deadlines will be extended. It is recommended that applicants be mindful of their specific local holidays and ensure that any response to the Industrial Design Office be filed as early as possible. If the time period to reply to a report is insufficient, the applicant may request an extension. See section 14.01.01 of this Manual for more details on extension of time.
A person doing business before the Industrial Design Office must provide their postal address.
Generally, applicants choose to appoint an agent to represent them. See section 2.01 of this Manual for more information on how to appoint an agent. If an agent has been appointed, the Industrial Design Office will send communications to that agent. If no agent has been appointed, the Industrial Design Office will only communicate with the applicant.
If there is more than one applicant, the Industrial Design Office will communicate with the applicant authorized by the other applicant(s) to serve as the contact for correspondence. If there is no indication to that effect, the Industrial Design Office will communicate with the first applicant named in the application.
Any written communication in respect of an application must contain the name of the applicant and, if known, the application number. Likewise, written communications in respect of a registered design must contain the name of the registered proprietor and the registration number.
All documents submitted to the Industrial Design Office must be clear, legible and permit direct reproduction. The Industrial Design Office may ask applicants to resubmit documents if they do not meet these requirements.
Generally, the Industrial Design Office will not send correspondence to a third party concerning the prosecution of an application. Third party correspondence submitted to the Industrial Design Office with the apparent intent of protesting the registration of a design will be acknowledged and placed on file; no information will be provided to a third party as to the action taken by the Industrial Design Office. Note that this communication forms part of the file and will be made available to the public with the application or registration. For more information on the prescribed date on which an application will be made available to the public, see section 20.01 of this Manual.
The Industrial Design Office will disregard any part of a document that is submitted in a language other than French or English with the exception of the representation of the design or a priority document. See section 8.07.08 of this Manual for more information on requests for priority documents.
Relevant provision(s): 24.1(1) IDA; 2, 4, 5(1) to (3), 6 to 11 IDR.
A person may represent themselves, or appoint an agent to represent them in business before the Industrial Design Office. If an agent is appointed, the applicant must be represented by that agent to prosecute their application. If an agent has been appointed, the Industrial Design Office will accept only instructions from that agent to avoid receiving different or conflicting instructions.
In order for an agent to be considered appointed, the Industrial Design Office must receive a notice of appointment that includes the name and postal address of the appointed agent. The applicant’s signed authorization to appoint an agent is not required.
The appointed agent should be identified clearly, either in the application itself or in a separate document. When the Industrial Design Office receives this information, it will send a confirmation of appointment to both the applicant and the appointed agent, except when the agent is appointed in the application at time of filing. If the notice of appointment omits the required information, the Industrial Design Office will notify both the applicant and the requestor that the appointment is considered without effect.
Note that the appointment of a representative in an International application is only effective before the International Bureau of the World Intellectual Property Organization (WIPO). Should the applicant wish to appoint an agent in Canada, a notice of appointment must be communicated directly to the Industrial Design Office. The international registration number and the associated Canadian application (Hague application) number(s), if known, should be identified clearly on the notice of appointment of agent. If an international registration contains multiple designs and only the international registration number was provided, the agent will be considered appointed on all corresponding Hague applications.
Although the Regulations generally stipulate that if an agent is appointed, the applicant must be represented by that agent to prosecute their application, exceptions exist where, notwithstanding the appointment of an agent, an applicant may represent themselves or be represented by an authorized person, to do any of the following:
The appointment of an agent is effective beginning on the day on which the Industrial Design Office receives the notice of appointment.
The appointment of an agent may be revoked at any time by sending a notice to the Industrial Design Office.
The appointed agent may be changed by sending a notice of revocation of the former agent to the Industrial Design Office and a notice of appointment with the name and postal address of the newly appointed agent. The signature of the applicant is not required to revoke an agent.
When notice of the revocation is provided by the current agent, the applicant or the person authorized by the applicant, the Industrial Design Office will send a confirmation to the revoked agent and the applicant.
The revocation of an agent and the appointment of a new agent start on the day on which the Industrial Design Office receives the notice of revocation and the notice of appointment.
The Industrial Design Office will record a change in the name or address of an appointed agent upon request. Please note that such a change will affect all applications and registrations for which the agent is appointed.
Relevant provision(s): 12(1) to (6) IDR.
Specific rules apply to the transfer of Hague applications or registrations. These are outlined in section 31 of this Manual.
Every design, whether registered or unregistered is transferable, in whole or in part. The Industrial Design Office will record or register a transfer upon receipt of a written request that includes the name and postal address of the transferee and the required fee. An applicant or any person authorized by them may make a request to record a transfer and pay the fee, whether there is an agent on file or not.
A merger usually results in a change in the identity of the applicant or registered proprietor. Consequently, a request to record a merger is generally treated as a request for transfer. The Industrial Design Office will record or register the merger upon receipt of a written request that includes the name and postal address of the new entity and the required fee.
Additionally, unless submitted by the applicant or the registered proprietor, evidence of the merger is required. The Industrial Design Office will assess all evidence on a case-by-case basis and will contact the requestor if additional documentation or clarification is required.
If the merger does not result in a change to the identity of the applicant or the registered proprietor, please inform the Industrial Design Office when submitting your request. Additionally, a merger may also merely result in a change of name. In both cases, payment of a fee is not required.
Evidence of the transfer is required when a request to record or register a transfer is submitted by the transferee. The Industrial Design Office will assess all evidence on a case-by-case basis and will contact the requestor if additional documentation or clarification is required.
Evidence of the transfer is not required when a request to record or register a transfer is submitted by the applicant or the registered proprietor.
If the Industrial Design Office receives satisfactory evidence that the recordal or registration of a transfer should not have been made, it will remove the recording or registration of that transfer.
The Industrial Design Office is not authorized to remove the registration of a transfer on a registered design for the reason only that the transferor had previously transferred the registered design to another person.
Relevant provision(s): 13(1) to (6) IDA; 34 IDR.
The Act and Regulations do not provide for the recordal of licenses and security agreements. However, any person may provide the Industrial Design Office with copies of a licence and/or a security agreement that relates to a registered design or an application for the registration of a design. The Industrial Design Office will keep these documents on file and make them available to the public to the extent that they relate to a registered design or an application that is available to the public. See section 20.01 of this Manual for more information on when applications and related documents are made available to the public.
A confirmation of receipt will be sent to the requestor.
The Industrial Design Office will register a change of name or address of a registered proprietor upon request.
If an applicant requests to change the name or address on their application, the Industrial Design Office will process this request as an amendment to the application.
In both cases, a change that alters the identity of a person is considered to be a transfer and not a change of name. See section 3 of this Manual for more information on transfers.
In the event that the wrong applicant was named in the application, the Industrial Design Office may substitute the applicant before registration if it is satisfied that the person was the proprietor when the application was filed.
A change of name or address affecting Hague applications or Hague registrations must not be submitted directly to the Industrial Design Office. Rather, the applicant or registered proprietor must contact the International Bureau of WIPO to request the recording of a change in name or postal address of the holder.
Relevant provision(s): 4(2) IDA; 25(2)(a), 35 IDR.
As prescribed by the Regulations, the applicant must pay different fees during the industrial design registration process.
The Service Fees Act (SFA) increases transparency, accountability and predictability regarding service fees. It also helps ensure that fees charged keep pace with inflation by prescribing an annual adjustment of fees based on the previous year’s percentage of change in the April All‑items Consumer Price Index published by Statistics Canada. Accordingly, certain fees for industrial design services will be adjusted every year on the first of January.
On January 1, 2024, the fees for the filing of an application, maintenance, reinstatement and advanced examination will increase by 6.8% in accordance with the SFA. As a result, the amounts shown in the Tariff of Fees of the Regulations may not be up-to-date. To find out the exact amount of a fee, please consult the list of fees available on CIPO’s website.
In addition to the annual adjustment outlined in section 5.01 of this Manual, CIPO will be increasing most of its fees by 25% on January 1, 2024. Please consult CIPO’s fee adjustment page for more information about the changes. To find out the exact amount of a fee, please consult the list of fees available on CIPO’s website.
The applicant or any person authorized by the applicant may pay fees, even when an agent is appointed.
For services that are subject to an annual adjustment, the amount to be paid depends on the date on which the payment is received by the Minister, even if the request was originally made prior to the annual adjustment. For example, if an application is filed before January first but the filing fee is paid only after that date, the adjusted fee for the new year will be required.
For more information on the payment of fees, please refer to the practice notices entitled Fee Payment Practice of the Canadian Intellectual Property Office, and Fee Payment: General Authorization to Charge a Deficiency, dated June 8, 2009. To find out the exact amount of a fee, please consult the list of fees available on CIPO’s website.
Please refer to our website for more information on the different methods of payment accepted by CIPO.
Upon written request, the Industrial Design Office will refund any amount paid in excess of the fee prescribed. A request for refund must be received by the Industrial Design Office no later than three years after the day on which the fee was paid.
For greater certainty, amounts paid in excess of the fee prescribed for the purpose of refunds include:
The service associated with the filing of an application is considered to have begun upon assessment of the formal requirements (e.g., the filing requirements). If a request for the withdrawal of an application and refund of the fee is received after the assessment of formal requirements, the filing fee will generally not be refunded.
Exceptionally, payment of the filing fee for multiple identical applications may be refunded after the assessment of formal requirements, but only in cases where the duplicate filings result from an office error or a technical malfunction of the online system. If it is established that such error or malfunction has occurred, the Industrial Design Office will refund the filing fee provided that the duplicates are withdrawn and that a request for refund is received no later than three years after the day on which the fees were paid.
Note that the service of delayed registration is considered to have been provided when the delay is recorded on the file. From this point on, the fee paid will not be refunded.
In accordance with section 7 of the Service Fees Act, the Industrial Design Office must remit a portion of a fee when the established service standard associated with certain fees has not been met. Please refer to the Remissions at CIPO web page and the CIPO’s Program Annex for more information on how the principles and requirements of the Innovation, Science and Economic Development Canada Remission Policy are applied within CIPO.
Relevant provision(s): 12(4) and 38 IDR; 7 and 17(1) SFA.
Industrial design applications are confidential until the prescribed date on which they are to be made available to the public. Please see section 20.01 of this Manual for details on determining the prescribed date.
Prior to being made available to the public, applications are available only to the applicant or the applicant's agent, unless the Industrial Design Office receives written authorization from the applicant or the applicant's agent allowing someone else to obtain them.
Please contact the Client Service Centre to order copies of an application or registration. More information on the Client Service Centre’s products and services is found on the Client Service Centre web page.
You may also order copies of documents online through CIPO’s website.
An industrial design application can be made available to other Intellectual Property Offices (IPOs) through WIPO’s Digital Access Service, an electronic digital library allowing priority documents to be securely exchanged between participating IPOs.
The Industrial Design Office will make available the application only upon written request. Such requests may be made either at the time of filing or subsequently. If the applicant chooses to make the request at the time of filing, it can be included in a cover letter for an application filed on paper, or in the Comments box of the Additional Services section for applications filed using CIPO’s Industrial Design E-Services application. Alternatively, such request may also be made subsequently by sending a letter to the Industrial Design Office or by using CIPO’s Industrial Design General Correspondence application.
Once the application is made available on WIPO’s Digital Access Service, the Industrial Design Office will send to the applicant a notice of confirmation, indicating the access code which may be shared with a participating IPO.
Please note that all industrial design applications can be made available through WIPO’s Digital Access Service, regardless of when they were filed.
For copies of Hague applications or registrations, please contact the WIPO International Bureau. See the Extract and Certified Copies section of the Hague Guide for Users for more information.
Copies of Canadian documentation in relation to Hague applications or registrations can be obtained by contacting the Client Service Centre.
Relevant provision(s): 32 IDR.
The filing date of an application, other than for a divisional or a Hague application, is the day on which the Industrial Design Office receives all of the following:
The Industrial Design Office will issue a Notice of Filing after all of the above requirements are met. If these requirements are not met, the Industrial Design Office will notify and request that the applicant submit the missing information no later than two months after the date of the notice. No extension of time can be given. If the Industrial Design Office does not receive the missing information by the deadline indicated in the notice, the application will be deemed never to have been filed. Any fees paid will not be refunded.
The filing date of a divisional application is the same as that of the original application. Information on the Industrial Design Office’s practices relating to divisional applications is provided in section 8.08 of this Manual.
The filing date of a Hague application is the date of registration of the corresponding international registration. More information on international registration and the filing date of a Hague application is provided in section 25 of this Manual.
Relevant provision(s): 4(3) IDA; 21(2) to (4), 41(1) and (2), 42(2) IDR.
The use of a particular form is not required. The following table highlights key mandatory application requirements, as well as optional content that can be included in an application. These elements are explained below:
| Mandatory content
|
Additional content where applicable
|
|---|---|
| • Name and postal address of applicant;
• Name of the finished article;
• Representation of the design(s); and,
• Filing fee.
|
• Postal address of the agent, if one is appointed (see section 2.01);
• Descriptive statement;
• Statement of limitation;
• Priority claim; and,
• Indication of divisional application
|
Relevant provision(s): 4(1)(a) to (c), 8.1 IDA; 12(6), 16, 17(2), 18, 20(3), 26(2), 31, 37 IDR.
Applications and documents submitted to the Industrial Design Office must meet the following form requirements:
Relevant provision(s): 9, 10 IDR.
Applications submitted to the Industrial Design Office must contain the following information:
Relevant provision(s): 4(1) IDA; 16, 37 IDR.
An application must be limited to one design applied to a single finished article or set, or to variants applied to a single finished article or set. If an application contains more than one design, the applicant will be required to restrict the application to one design or variants, applied to a single finished article or set.
“Variants” are defined as designs applied to the same article or set and not differing substantially from one another. Generally, to be accepted as variants, the designs must be very similar and possess the described features without substantial variation as illustrated in Example 1.
| Example 1 – Variant designs
|
||
|
Fig. 1.1
|
Fig. 2.1
|
Fig. 3.1
|
|
Finished article: Coffee Tumbler
Statement: The design is limited to features of shape, configuration and ornament of the Coffee Tumbler as shown in the reproductions.
Fig. 1.1 is a perspective view of the first variant of the Coffee Tumbler;
Fig. 2.1 is a perspective view of the second variant of the Coffee Tumbler; and,
Fig. 3.1 is a perspective view of the third variant of the Coffee Tumbler.
|
||
Relevant provision(s): 2 IDA; 20(1) IDR.
Section 2 of the Act defines a “set” as 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 are applied such as a cutlery set where the same design is applied to a fork, a knife and a spoon would constitute a set according to this definition.
It should be clear from the application that the design applies to a set. If a statement is provided, it should refer only to the design features common among all pieces of the set (e.g., the identical design or variants applied to each piece of the set). It is also acceptable to indicate the location of these features on each piece. Individual views of each article of the set can also be included. Example 2 illustrates a set.
|
Example 2 – Set
|
|
Fig. 1
|
| Finished article: Set of Cutlery
Statement: Fig. 1 is a front view of the Set of Cutlery. The design consists of the surface ornamentation applied consistently to the handles of the Set of Cutlery as shown in the reproduction.
|
Relevant provision: 2 IDA
Photographs or reproductions (drawings) contained in an application must be presented in the following manner:
The representation of a design must, taking into account the name of the finished article and any statement, be sufficient to fully disclose the design.
A representation of a design is composed of one or more photographs or reproductions (e.g. drawings).
The application may contain multiple views that show a design from different angles to fully disclose the design. These views may include a: ‘perspective view’; ‘front view’; ‘back view’; ‘right side view’; ‘left side view’; ‘top view’; and ‘bottom view’. Example 3 presents a design applied to an article in seven different views.
| Example 3 – Views
|
|
|
|
Finished article: Jerrycan
Statement:
Fig. 1.1 is a perspective view of the Jerrycan;
Fig. 1.2 is a front view of the Jerrycan;
Fig. 1.3 is a back view of the Jerrycan;
Fig. 1.4 is a right-side view of the Jerrycan;
Fig. 1.5 is a left-side view of the Jerrycan;
Fig. 1.6 is a top view of the Jerrycan; and,
Fig. 1.7 is a bottom view of the Jerrycan.
|
The Industrial Design Office recommends that the applicant file as many views as necessary in order to fully disclose the features of the design for which protection is sought. However, in some cases, one view may be sufficient to fully disclose the design as illustrated in Example 4.
| Example 4 – One view is sufficient to disclose the design
|
|
Fig. 1.1
|
|
Finished article: Display Screen
Statement: The design is limited to the feature of ornament of the Display Screen as illustrated in the reproduction. Fig. 1.1 is a front view of the Display Screen.
|
The representation of a design must be of sufficient quality to permit the features of the design to be identified clearly and accurately. The Industrial Design Office may request that the applicant submit better-quality reproductions if the original images inadequately illustrate the design. Example 5 illustrates both acceptable and unacceptable reproductions.
| Example 5 – Acceptable and unacceptable quality
|
|
|
|
|
| Acceptable
|
Unacceptable
|
| Finished article: Bottle
|
|
To ensure that the design features are clearly and accurately identified in the foreground, applicants should use an appropriate background. Applicants should consider factors such as colouration, contrast and shadow when choosing a background. Example 6 illustrates the correct and incorrect use of these principles.
| Example 6 – Acceptable and unacceptable backgrounds
|
|
|
Acceptable
|
Unacceptable
|
| Finished Article: Lid
|
|
Shadowing in a reproduction or photograph is acceptable if the shadows do not interfere with the features of the design. As illustrated in Example 7, the shadows interfere or distort the contours of the article making it difficult to clearly and accurately see the features of the design. In this instance, the Industrial Design Office would issue an objection for lack of clarity.
| Example 7 – Unacceptable shadowing in a reproduction or photograph
|
|
|
| Unacceptable
|
Photographs and reproductions can be included in the same application. However, the applicant should ensure that no ambiguity results from this combination. The Industrial Design Office will issue an objection if the features of the design are inconsistent between both the reproduction and photograph of the design.
To illustrate how combining photographs and reproductions in the same application can be inconsistent, Example 8 shows how details are lost between the photograph illustrated in Fig. 1.1 and the reproduction in Fig. 2.1. Note that ridges seen in the photograph are not present in the reproduction. This creates a different visual impression of the design features, which may lead to an objection.
To resolve this objection, an applicant may present the photographs and reproductions as variants of each other, if they comply with the definition of variant designs, as shown in Example 8. Alternatively, the applicant may also ensure that all design features are consistent between the photographs and reproductions.
| Example 8 – Combination of photographs and reproductions
|
|
|
|
|
| Fig 1.1
|
Fig. 2.1
|
|
Finished article: Bottle
Statement: The design is limited to the feature of shape and configuration of the Bottle as illustrated in the reproduction.
Fig. 1.1 is a front view of the first variant of the Bottle in a photograph; and,
Fig. 2.1 is a front view of the second variant of the Bottle in a reproduction.
|
|
Shading the surface of an article can be used to illustrate its shape provided that it does not distort or obscure the design. Shading should be shown consistently throughout the reproductions and should be restricted to the design portions of the article. Example 9, illustrates an acceptable use of shading. Please note that no shading is added to the feet of the Stool as they do not form part of the design.
| Example 9 – Shading
|
|
Fig. 1.1
|
|
Finished article: Stool
Statement: The design is limited to the features of shape and configuration of the Stool shown in the representation. Fig. 1.1 is a perspective view of the Stool.
|
Transparency can be illustrated by the use of thin diagonal shade lines. Portions of the design and article that would be visible through the transparent section should be shown. Example 10, a Butter Dish, illustrates an acceptable use of transparency.
|
Example 10 – Transparency
|
|
Fig. 1.1
|
| Finished article: Butter Dish
Statement: The design is limited to the feature of shape of the Butter Dish as shown in the reproduction. Fig. 1.1 is a perspective view of the Butter Dish.
|
Translucency can be shown with thin diagonal shade lines and light shading throughout the translucent area. Portions of the article that are visible through the translucent section should be shown. Example 11 illustrates an acceptable use of translucency. Optionally, a descriptive statement such as: “The area indicated by thin diagonal lines and light shading represent translucency” may be added to indicate the presence of translucency in the reproduction.
| Example 11 – Translucency
|
|
Fig. 1.1
|
| Finished article: Butter Dish
Statement: The design consists of the features of shape and configuration of the Butter Dish as shown in the reproduction. The area indicated by thin diagonal lines and light shading represent translucency. Fig. 1.1 is a perspective view of the Butter Dish.
|
To illustrate articles of indefinite length and/or width, the reproductions should show break lines in the article’s length and/or width. It should be obvious that the break lines are for illustrating a break in the article and do not form part of the design. To ensure clarity, the applicant may add a statement which indicates that indefinite length and/or width is shown. Break lines may be shown with double sinusoidal lines as illustrated in Example 12, sharp jagged lines as illustrated in Example 13, or a pair of angled parallel lines broken occasionally by a zigzag as illustrated in Example 14.
Exceptionally, articles of indefinite length and width with a repeating surface pattern can be illustrated with dotted or broken lines around the pattern to be repeated as illustrated in Example 17.
| Example 12 – Double sinusoidal lines to illustrate an article of indefinite length
|
|
Fig. 1.1
|
| Finished article: Decorative Moulding
Statement: The design is limited to the features of shape and configuration of the entire Decorative Moulding as shown in the reproduction. Fig. 1.1 is a perspective view of the Decorative Moulding of indefinite length indicated by the double sinusoidal lines.
|
Regardless of where an article is cut, the cross-section should remain identical and there should be no surface pattern and no three-dimensional (3D) features. Extrusions for mouldings or windows as illustrated in Examples 13 and 14 below, illustrate reproductions that are accepted by the Industrial Design Office.
| Example 13 – Sharp jagged lines
|
|
Fig. 1.1
|
| Finished article: Extrusion
Statement: The design is limited to the features of shape of the Extrusion shown in the reproduction. The sharp jagged lines on the reproduction indicate that the article is of indefinite length. Fig. 1.1 is a side view of the Extrusion.
|
| Example 14 – Parallel lines broken by a zigzag
|
|
Fig. 1.1
|
| Finished article: Window Extrusion
Statement: The design is limited to the features of shape and configuration of the Window Extrusion of indefinite length. The parallel lines broken by a zigzag in the reproduction indicate that the article is of indefinite length. Fig. 1.1 is a perspective view of the front side and top of the Window Extrusion.
|
This example refers to a design that has a repeating pattern on the surface of the article and does not affect the article’s cross-section. A statement referring to indefinite length or width should be included in the application. The statement should also indicate that the pattern repeats at regular intervals throughout the length or width of the article. Example 15 shows an acceptable method of illustrating an article of indefinite length with a repeating surface pattern.
| Example 15 – Repeating surface pattern
|
|
Fig. 1.1
|
| Finished article: Ribbon
Statement: The design is limited to the feature of pattern as shown on the Ribbon. The pattern shown on the surface repeats throughout the length of the Ribbon of indefinite length. Fig. 1.1 is a front view of the Ribbon of indefinite length.
|
This example refers to a design that has constant 3D features, which repeat at regular intervals throughout the article’s length and width. A statement referring to indefinite length or width should be included in the application. The statement should also indicate that such features repeat consistently and at regular intervals throughout the length or width of the article.
The combined reproduction and statement in Example 16 would be accepted by the Industrial Design Office for this type of article.
| Example 16 – Repeating 3D features
|
|
Fig. 1.1
|
| Finished article: Backpack Hanging Rack
Statement: The design is limited to the features of shape and configuration of the Backpack Hanging Rack. The design is of indefinite length as shown in the reproduction. The three‑dimensional features on the front surface of the article repeat consistently and at regular intervals throughout the length of the article. Fig. 1.1 is a perspective view of the Backpack Hanging Rack.
|
Articles having a repeating surface pattern of both indefinite length and width may be illustrated by dotted or broken lines around the pattern to be repeated. A statement should also be included that refers to the repeat pattern and the indefinite length and width. The combined reproduction and statement in Example 17 below would be considered acceptable by the Industrial Design Office.
| Example 17 – Repeating surface pattern
|
|
Fig. 1.1
|
| Finished article: Paper Towel
Statement: The design is limited to the pattern on the Paper Towel. The design is of indefinite length and width as shown by the broken lines around the perimeter of the reproduction. The pattern shown on the surface repeats throughout the length and width of the Paper Towel. Fig. 1.1 is a front view of the Paper Towel.
|
An article having a portion of it that is of varying length can be illustrated through the use of break lines in the relevant portion. A statement should also be included indicating that the portion is of variable length. Example 18 includes a reproduction and statement that accurately reflects variable length.
| Example 18 – Variable length in a portion
|
|
Fig. 1.1
|
| Finished article: Rake
Statement: The design is limited to the features of shape and configuration of the Rake as shown in the reproduction. The handle portion of the Rake varies in length within the break lines as illustrated in the reproduction. Fig. 1.1 is a front view of the Rake.
|
An article having a repeating surface pattern and variable length in only a portion of the article can be illustrated with break lines in the relevant portion. A statement indicating that the pattern repeats throughout the variable length of the portion should also be included.
An article having repeating 3D features in only a portion of the article can be illustrated with break lines in the relevant portion. A statement indicating that the features repeat at regular intervals throughout the variable length of the portion should also be included. See Example 19.
| Example 19 – Portion of variable length having 3D features
|
|
Fig. 1.1
|
| Finished article: Paper Towel Holder
Statement: The design is limited to the features of shape, configuration and pattern of the Paper Towel Holder as shown in the reproduction. The 3D-elements repeat consistently and at regular intervals throughout the variable length of the bar portion of the Paper Towel Holder. Fig. 1.1 is a front perspective view of the Paper Towel Holder.
|
A cross-sectional view may be included in order to better disclose exterior features that are not adequately represented in the conventional views. Internal features that are not visible in the completely assembled article should not be shown.
Method to illustrate a cross-sectional view (Example 20):
|
Example 20 – Cross-sectional view
|
||
|
Fig. 1.1
|
Fig. 1.2
|
Fig. 1.3
|
| Finished article: Hockey Puck
Statement: The design is limited to the features of shape, configuration and pattern of the Hockey Puck as shown in the reproductions.
Fig. 1.1 is a perspective view of a Hockey Puck;
Fig. 1.2 is a top plan view thereof; and,
Fig. 1.3 is a cross-sectional view thereof, taken along lines 1.3-1.3 of Fig. 1.2.
|
||
An enlarged or magnified view of a portion of the design, also known as an “enlarged fragmentary view” or “magnified view” may be included to show a portion of the design on a larger scale in order to better disclose small details.
Example 21 provides guidance on the acceptable method to illustrate an enlarged fragmentary view:
| Example 21 – Enlarged fragmentary or magnified view
|
|
|
|
|
| Fig. 1.1
|
Fig. 1.2
|
| Finished article: Test Tube with Ergonomic Handle
Statement: The design is limited to the visual features of shape and configuration of the Test Tube with Ergonomic Handle as shown in the reproductions.
Fig. 1.1 is a front perspective view of the Test Tube with Ergonomic Handle; and,
Fig. 1.2 is an enlarged fragmentary view of Fig. 1.1.
|
|
One or more environment views may be included to show the article in the context of its surroundings. The environment is subject matter that is not part of the finished article or design.
Method to illustrate an environmental view (Example 22):
| Example 22 – Environmental view
|
|
|
Fig. 1.1
|
Fig. 1.2
|
| Finished article: Faucet
Statement: The design is limited to the features of shape and configuration of the Faucet as shown in the reproductions. The dotted lines represent environment only, and do not form part of the design.
Fig. 1.1 is a perspective view of the Faucet showing the environment; and,
Fig. 1.2 is a perspective view of the Faucet.
|
|
It is acceptable to use shading techniques to show contrasting tones provided they do not distort or hide the design. Contrasting tones should be restricted to the design portions of the article only as illustrated in Example 23.
| Example 23 – Contrasting tones
|
|
Fig. 1.1
|
| Finished article: Toy Cube
Statement: The design is limited to the features of shape, configuration and ornament of the Toy Cube shown in the reproduction. Fig. 1.1 is a perspective view of the Toy Cube.
|
Views of the article in the open and closed positions may be included to reveal design features provided that the article is normally seen or used in those positions. It is recommended that the figure reference in the statement indicates the different positions shown, as illustrated in Example 24.
|
Example 24 – Open and closed positions
|
|
|
Fig 1.1
|
Fig 1.2
|
| Finished article: Pill Container
Statement: The design is limited to the features of shape, configuration and ornament of the Pill Container as shown in the reproductions.
Fig. 1.1 is a perspective view of the Pill Container with the lid in an open position; and,
Fig. 1.2 is a perspective view of the Pill Container with the lid in the closed position.
|
|
Views of the article in extended and retracted positions may be included in an application provided that the article is normally seen and used in those positions. It is recommended that the figure reference indicate the different positions shown as illustrated in Example 25.
| Example 25 – Extended and retracted views
|
|||
|
Fig. 1.1
|
Fig. 1.2
|
Fig 1.3
|
|
| Finished article: Telescoping Container Cap
Statement: The design is limited to the features of shape and configuration of the entire Telescoping Container Cap as shown in the reproductions.
Fig. 1.1 is a perspective view of the Telescoping Container Cap in a fully extended
position;
Fig. 1.2 is a perspective view of the Telescoping Container Cap in a semi-extended/retracted position; and,
Fig. 1.3 is a perspective view of the Telescoping Container Cap in a fully retracted position.
|
|||
A multi-component article should be shown fully assembled. An exploded view may also be included provided that the article is seen or used in that position. In exploded views, it should be clear how the components join together. Example 26 illustrates an acceptable exploded view.
| Example 26 – Exploded view for multi-component articles
|
|
|
Fig. 1.1
|
Fig 1.2
|
| Finished article: Food Processor
Statement:
Fig. 1.1 is a perspective view of the Food Processor; and,
Fig. 1.2 is an exploded view of the Food Processor of Fig. 1.1.
|
|
Colour may form part of a design as a feature of pattern or ornament. As such, colour photographs or reproductions may be submitted in an application. The Industrial Design Office recommends that applications for the registration of a design in colour be filed using CIPO’s Industrial Design E-Services application. Filing on paper or through fax is not recommended as it may result in an inaccurate reproduction of the colour.
Irrespective of the method used to file the application, a descriptive statement referencing colour should generally accompany colour reproductions. Any reference to colour in a descriptive statement must be clear and unambiguous. For example, the adjective "blue" is acceptable; "blue-ish" is not. The Industrial Design Office recommends the use of widely recognized colour identification systems in order to ensure the accuracy of colour claims. In this case, applicants should include a descriptive statement of the colour and refer to the applicable colour identification system.
While the Industrial Design Office does not endorse or recommend a particular colour identification system, the colours identified by any system used should be easily reproducible by the general public. If the colour system is the subject of a registered trademark, it should be identified using uppercase letters and should include a statement that it is a registered trademark such as: “The blue colour shown in the reproductions is PANTONE
3538C. *PANTONE is a registered trademark." Example 27 is an acceptable use of colour in an application.
Since colour either may form part of the design or be used to limit the design to part of the finished article, the Industrial Design Office will issue an objection if colour is included in non-design portions of an article and its purpose is unclear.
|
Example 27 – Colour in the reproductions
|
|
Fig. 1.1
|
|
Finished article: Glove
Statement: Fig. 1.1 is a front view of the Glove illustrating a ventral side of the glove having a PANTONE* Blue 3538C cuff. The rest of the Glove is shown in PANTONE* Grey 425C. *PANTONE is a registered trademark.
|
The design of an electronic icon can be shown applied to a finished article (Fig. 1.1 of Example 28) or in isolation (Fig 1.2). The name of the finished article in respect of which the design is to be registered should always be identified in the application as illustrated in Example 28.
| Example 28 – Electronic Icon
|
|
|
Fig. 1.1
|
Fig. 1.2
|
|
Finished article: Display Screen with Electronic Icon
Statement:
Fig. 1.1 is a front view of the Display Screen with Electronic Icon; and,
Fig. 1.2 is a view of the Electronic Icon.
|
|
The Industrial Design Office accepts as registrable subject matter computer-generated animated designs that change in appearance while viewing. The reproductions submitted in the application will be viewed as a sequence of frames that define the computer-generated animated design.
As illustrated in Example 29, it is strongly recommended that a figure reference accompany an application for the registration of an animated design. When included, the figure reference should read as “Figure 1.1 – first frame of the sequence,” “Figure 1.2 – second frame of the sequence,” etc. If there are no figure references and there is no descriptive statement of the sequence, the Industrial Design Office will interpret the order in which the figures appear as defining the sequence of the design for which protection is sought. The individual frames need not include substantially similar content to one another, as they are not assessed independently from their sequential arrangement.
| Example 29 – Computer-generated animated designs
|
||
|
|
|
|
| Fig. 1.1
|
Fig. 1.2
|
Fig. 1.3
|
|
|
|
|
| Fig. 2.1
|
Fig. 2.2
|
Fig. 2.3
|
| Finished article: Thermostat Display Screen
Statement: The design is limited to the feature of ornament applied to a Thermostat Display Screen as shown in the reproductions.
Fig. 1.1 is a first frame of the sequence of the first variant;
Fig. 1.2 is a second frame of the sequence of the first variant;
Fig. 1.3 is a third frame of the sequence of the first variant;
Fig. 2.1 is a first frame of the sequence of the second variant;
Fig. 2.2 is a second frame of the sequence of the second variant; and,
Fig. 2.3 is a third frame of the sequence of the second variant.
|
||
Relevant provision(s): 9(b), 14(a) to (d), 15 IDR.
An application is deemed to relate to all of the features of “shape”, “configuration”, “pattern” and “ornament” shown in the representation of the design unless an exception described below applies. Accordingly, a statement is not required if the design relates to all of the features shown in the representation.
An applicant may use a statement in the application to limit some of the features from applying. For example, an acceptable statement of limitation would be: “The design is limited to the features of shape and configuration.”
The statement must clearly describe which features are claimed and must not create alternatives that may lead to ambiguity as to the scope of the design. For example, the following statement would not be acceptable: “The design is the visual features of the entire article shown in the reproductions, whether those features are features of one of shape, configuration, ornament or pattern or are a combination of any of these features.” The Industrial Design Office will issue an objection should a statement lead to ambiguity as to the scope of the design.
Note that a declaration that the design was not, to the proprietor’s knowledge, in use by any person other than the first proprietor at the time the design was adopted by the first proprietor is no longer required for applications filed on or after November 5, 2018. The Industrial Design Office will issue an objection should a statement include a declaration to that effect. Where an application is a divisional of an application filed before November 5, 2018, that declaration is required and may be included in a cover letter or in the description of the design.
A statement may also indicate that the application relates to only some or all of the features of shape, configuration, pattern or ornament of a part of the finished article. As Illustrated in Example 30, the statement is used to limit the features of the design and where the design is applied to the article: “The design is limited to the features of shape and configuration of the Table top. The legs do not form part of the design.”
|
Example 30 – Statement of limitation for part of the article
|
|
Fig. 1.1
|
|
Finished article: Table
Statement: The design is limited to the features of shape and configuration applied to the Table. The legs do not form part of the design. Fig. 1.1 is a perspective view of the Table.
|
A design may also be limited to parts of an article through the use of dotted or broken lines. In Example 31, the design portion is limited to the frame of the glasses. The features applied to the lenses do not form part of the design as they are illustrated using broken lines. It is unnecessary to include a statement in the application indicating that the broken (or dotted) lines do not form part of the design as this is deemed by the Regulations.
|
Example 31 – Features in dotted or broken lines
|
|
Fig. 1.1
|
|
Finished article: Glasses
Statement: Fig. 1.1 is a front elevated view of the Glasses.
|
If the reproduction of the design contains dotted or broken lines illustrating elements that are meant to form part of the design such as stitching on a garment, a statement should be included in the application to ensure that the dotted or broken lines are interpreted as stitching rather than a method of disclaiming features of the design (see Example 32).
|
Example 32 – Statement required when stitching is part of the design
|
|
Fig. 1.1
|
| Finished article: Shirt
Statement: The broken lines shown in the reproduction constitute stitching and are part of the design. Fig. 1.1 is a front view of the design.
|
Colouring can also be used to limit the design. Contrasting colour tones can be used to obscure features that do not form part of the design. When using colouring, the features for which protection is sought should be clearly visible, whereas the disclaimed features should be represented in a different tone so they appear blurred or imperceptible. Example 33 shows an acceptable use of colouring to disclaim portions of the article. If it is not evident that the purpose of the colouring is to indicate that the application does not relate to these features, a statement to this effect should be included in the application. To make it evident that the features do not form part of the design, the colouring can be extended to the background as illustrated.
|
Example 33 – Use of colouring to limit the design
|
||
|
Fig. 1.1
|
Fig. 1.2
|
Fig. 1.3
|
| Finished article: Car
Statement:
Fig. 1.1 is a front view of the car;
Fig. 1.2 is a left perspective view of the car; and,
Fig. 1.3 is a right-side view of the car.
|
||
Part of an article can be blurred in the representation so that some of features are vague or imperceptible creating a contrast between the design and non-design portions of the article. Example 34 shows an acceptable use of blurring, where the claimed front end of the car is shown clearly and the remainder of the car is blurred. If it is not evident that the purpose of the blurring is to indicate that the application does not relate to blurred features, a statement should be included in the application.
|
Example 34 – Use of blurring to limit the design
|
||
|
Fig. 1.1
|
Fig. 1.2
|
Fig. 1.3
|
|
Finished article: Car
Statement:
Fig. 1.1 is a front view of the car;
Fig. 1.2 is a left perspective view of the car; and,
Fig. 1.3 is a left-side view of the car.
|
||
Although the above options handle the majority of cases, there are exceptions that might warrant using an additional means to illustrate the distinction between design and non-design portions of the article. The Industrial Design Office will accept the use of boundary lines to define a boundary between the design and non-design portions of the article where the use of a statement of limitation, broken or dotted lines, colouring or blurring alone do not clearly show the design as applied to the article.
It should be clear by an accompanying statement that the boundary line is used to define design and non-design portions of an article. Due to the risk of including more than just the design within the boundary, boundaries should be used carefully in reproductions/photographs. Example 35 illustrates four types of acceptable boundary lines – using a dot-dash, coloured (red in this example), dotted and broken. Please note that other types of boundary lines are acceptable as long as their purpose is clearly defined.
|
Example 35 – Acceptable use of boundary lines
|
|||
|
Fig. 1
|
Fig. 2
|
Fig. 3
|
Fig. 4
|
| Finished article: Shoe Sole
Statement: The dot-dash (Fig. 1), coloured red (Fig. 2), dotted (Fig. 3) and broken (Fig. 4) boundary line does not form part of the design and is included to indicate that the design is limited to the features within its boundary.
|
|||
The applicant may include in the application a brief descriptive statement of the representation or features of the design. This descriptive statement must not refer to utilitarian function or a method or principle of manufacture or construction. It is acceptable to include in that statement an indication that a particular feature is considered to be an important feature of the design. For example, “The most significant feature of the design is the appearance of the rose at the base of the handle.”
In that case, any feature of the design that is referred to must be visible in the photographs or reproductions.
Note that a declaration that the design was not, to the proprietor’s knowledge, in use by any person other than the first proprietor at the time the design was adopted by the first proprietor is no longer required for applications filed on or after November 5, 2018. The Industrial Design Office will issue an objection should a description include information to that effect. Where an application is a divisional of an application filed before November 5, 2018, that declaration is required and may be included in a cover letter or in the description of the design.
Relevant provision(s): 17(1) to (4), 18 IDR.
An applicant can take advantage of the priority of a previously filed industrial design application by filing an application for the registration of an industrial design in Canada and by making a request for priority accompanied by the required information. Provided that the request for priority is made correctly, the priority date of the design will be used for the purpose of novelty assessment, instead of the filing date of the application.
To illustrate, an applicant may file an application for the registration of a design in Canada on May 31, 2017, and include a request for priority in the application indicating that an application for registration of the same design was previously filed in the United States of America, on January 10, 2017. Provided that the request for priority is made correctly, the Industrial Design Office would use January 10, 2017, as the date to assess novelty of the design. Any conflicting designs with a priority date that is after January 10, 2017, would generally be refused registration.
An applicant can make a request for priority either in the application or in a separate document. The request for priority must include the filing date, the name of the country or office where the previously regularly filed application was filed and, while not mandatory, its application number. For the purposes of identifying the country or office, two-letter alphabetic codes may be used provided they are based on WIPO’s standard ST.3, the recommended standard on two-letter codes for the representation of states, other entities and intergovernmental organizations.
If the request does not include the filing date or the name of the country or office where the previously regularly filed application was filed, the priority request will be deemed never to have been filed.
The filing date of the previously regularly filed application cannot be the same date as the filing date in Canada; if it is, the request for priority will be deemed never to have been filed.
The design disclosed in the previously regularly filed application must be the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether the design is considered to be the same.
Any request for priority in respect of a particular variant must be based on an application that fully discloses that same variant.
Any request for priority in respect of a particular design disclosed in the environment – which could be made the subject of a divisional application – must be based on an application that fully discloses that same design.
When filing an application, it is recommended to include all requests for priority for all subject matter disclosed in the application (including in the environment). Note that in all cases, the priority claim must be for the same design and fully disclosed in the previously regularly filed application.
If these requirements are met, the Industrial Design Office will assess the novelty of the design based on the date of priority, rather than based on the Canadian filing date.
Specific rules apply to requests for priority in respect of Hague applications. See section 30 of this Manual for more detail.
The Industrial Design Office must receive any request for priority, including all of the required information before the earlier of:
The countries in or for which a previously filed application may serve as the basis for priority are:
An applicant may withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications.
Where a request for priority is made in respect of an application, the earliest filing date of the priority application(s) will affect the date on which an application is made available to the public. If a request for priority is withdrawn at least two months before the date on which an application would have been made available to the public, the publication date will be recalculated without taking into account that priority request.
An error in the filing date, the name of the country or office of filing or the number of a previously regularly filed application in respect of which a priority claim has been made may only be corrected before the design is registered. The following two exceptions apply to this rule.
If an application has been made available to the public prior to registration, the Industrial Design Office may correct an error in the name of the country or office of filing only if it is obvious from the documents in the Industrial Design Office at the time the application is made public.
The Industrial Design Office will not correct an error in the filing date of a previously regularly filed application if more than six months have passed since the filing date of the pending application in Canada.
An applicant must contact the International Bureau of WIPO to correct any information relating to their priority claim in an international application under the Hague Agreement or to a divisional application resulting from a Hague application. The Industrial Design Office will disregard any request it receives to make a correction to a Hague applications priority claim or to a divisional application resulting from a Hague application.
If the priority date is relevant in order to assess novelty under section 8.2 of the Act, the Industrial Design Office will request that the applicant either submit a certified copy of the relevant priority documents or make a copy of the previously regularly filed application available on WIPO’s Digital Access Service.
The applicant must provide the requested information no later than three months after the date of the notice. This deadline can be extended by six months upon request. Only one six-month extension is available.
WIPO’s Digital Access Service is an electronic digital library allowing priority documents to be securely exchanged between participating IPOs. The Industrial Design Office will treat any priority document furnished to it via the WIPO service as if the document had been filed directly with the Industrial Design Office.
As indicated in the previous section, a priority document filed in a participating IPO may be made available to the Industrial Design Office through WIPO’s Digital Access Service in order to comply with a request for priority documents. In that case, the applicant must provide the number and the filing date of the previously regularly filed application along with the access code required to retrieve the priority document. If that information is not provided or incomplete, the applicant will be considered not to have complied with the request to provide priority documents.
If the previously regularly filed application is in a language other than French or English, the Industrial Design Office will require a translation. The applicant must provide the translation along with the requested priority documents. If the translation is not provided, the applicant will be considered not to have complied with the request for priority documents.
If the Industrial Design Office believes the translation is inaccurate, it may by notice request that the applicant:
The applicant must provide the requested statement or new translation no later than three months after the date of the notice. This deadline can be extended by six months upon request. Only one six-month extension is available.
If an applicant does not comply with the request to provide the priority documents and a translation by either the initial deadline, or the extension if applicable, the priority claim will be deemed to have been withdrawn at the end of that time period. The applicant’s priority request would be removed only in respect of the previously regularly filed application that was the subject of the request for priority documents.
When a priority claim is removed the publication date of the application will be recalculated based on the Canadian filing date or the earliest priority claim remaining in the application, if any. See section 20.02 of this Manual for more information on publication when changes are made to the date of priority.
Generally, the Industrial Design Office conducts a prior art search six months after the filing date of an application because of the possibility of subsequent filed applications containing designs having earlier priority dates. However, the Industrial Design Office may conduct the search as early as six months from the priority date of the design that is the subject of the application if the applicant submits a certified copy or makes available a copy of the previously regularly filed application through WIPO’s Digital Access Service for each previously regularly filed application on which the priority claim is based. Please note that the date from which the Industrial Design Office may conduct the search will vary depending on the particular circumstances of the case at hand, as well as processing times.
A certified copy of the foreign application and a certificate from the foreign office showing the filing date of the application can be submitted to the Industrial Design Office in a language other than English or French, as long as they are accompanied by a translation of the documents into English or French. If not, the Industrial Design Office will not be able to assess the documentation nor will it advance the search for prior art.
The design disclosed in the priority document must be for the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether or not the design is considered to be the same. If your application contains variants, each of them must be adequately supported by the priority documentation provided. If a variant is not supported, the search will be conducted no earlier than six months after the Canadian filing date. See section 16 of this Manual for more detail on the novelty assessment.
To maximize its benefit, search based on priority can be combined with a request for advanced examination. See section 10 of this Manual for more detail on advanced examination.
Relevant provision(s): 8, 8.1 IDA; 26(2) to (5), 27(1) to 27(6), 28 IDR.
The applicant may file a divisional application with the Industrial Design Office for any design applied to a finished article that was disclosed in the original application on its filing date. The finished article must also have been disclosed in the original application. Divisional applications are available for both national and Hague applications.
A divisional application is a separate application, including with respect to the payment of any fees.
The original application – in other words, the application being divided – must be pending (e.g. the application must not be withdrawn, abandoned and past the reinstatement date, refused or registered).
The applicant must include a statement that identifies the application as a divisional. This statement must be submitted to the Industrial Design Office as part of the application or in a separate document, no later than three months after the date on which the divisional application was received in the Industrial Design Office. To facilitate processing within the Industrial Design Office, it is strongly advised that applicants indicate that an application is a divisional when it is filed.
A divisional application can be filed up to two years after the filing date of the original application, or the earliest original application in the series of applications from which the divisional results.
After the two year period has expired, an application can still be divided if a report by the Industrial Design Office requires that the applicant limit its application to one design or to variants, applied to a single finished article.
Divisional application(s) can be filed for designs identified as separate designs in the examiner report. These applications must be filed as long as no more than six months have elapsed since the day on which the original application was limited to one design or to variants and the original application is still pending. To ensure that the original application remains pending, applicants may request a delay of registration on the original application. See section 11 of this Manual for more information.
If any of the following actions have been taken in respect of the original application, on or before the day on which a divisional application is received, they are deemed to have been taken, on the same day, in respect of the divisional application:
Relevant provision(s): 20(2) to (6), 29 IDR.
In order for the Industrial Design Office to conduct a novelty assessment, each design must be classified according to the Canadian Classification Standard for Industrial Designs (the Canadian Classification).
The Canadian Classification uses the Locarno Classification as its core framework, an international classification system that is administered by WIPO and is reviewed and updated by the Committee of Experts of the Locarno Union at least once every five years. In order to align with international standards, the Canadian Classification adopts many attributes of the Locarno Classification, however additional subclasses are included to reflect Canadian practice. If required, the Industrial Design Office may review and update the Canadian Classification on an ad hoc basis.
The Canadian Classification consist of 32 classes that are themselves broken down in further subclasses. Specific classes are assigned based on the particular type of finished article to which the design is applied. For example, a design for a golf club would be classified as follows:
Class 21 Games, toys, tents and sports goods
└ 21-02 Gymnastics and sports apparatus and equipment
└ 21-02-01 Sports apparatus and equipment - golf
For the design to be classified accurately, it is important that the application clearly identifies the finished article, taking into account the representation of the design and any statement or description that may have been provided. Additional information about use or function, especially for articles with a specialized area of use or a technical nature, may assist the Industrial Design Office in the classification exercise. This information may be provided in a covering letter accompanying the application. If it is unclear from the content of an application what the finished article is and how it should be classified, the Industrial Design Office will issue an objection to the design‘s registration and require additional information or that modifications be made to the name of the finished article.
The Industrial Design Office will advance examination of an application out of the routine order on request, including payment of the required fee.
Relevant provision(s): 23 IDR.
An applicant may wish to delay registration of a design for a variety of reasons. For example, to allow more time to file a divisional application or to file another application for the same design in another country (some jurisdictions may reject an industrial design application if the design has already been registered in another country).
A request for delay of registration can be made at any time before registration, provided that the Industrial Design Office has enough time to implement the delay of registration. The request must identify the application affected and be submitted with the required fee.
The Industrial Design Office will delay the registration of the design until the day that is 30 months after the filing date of the application or, if a request for priority was made, 30 months after the earliest filing date of the previously regularly filed application on which the request for priority is based.
The Industrial Design Office will send the applicant a confirmation letter acknowledging receipt of the request once the required information and fee are received.
The registration of a design that is the subject of a Hague application cannot be delayed. Accordingly, any request for delay of registration that relates to a Hague application will be refused by the Industrial Design Office.
Applicants are advised to submit a request to delay registration and the required fee as early as possible to ensure that it is technically feasible to delay registration. If the Industrial Design Office does not receive the request and fee within a reasonable time, it may be unable to process the request prior to registration. Consequently, applicants are advised to submit their request to delay registration together with the fee when the application is filed, or as early as possible in the process.
A request for delay of registration may be withdrawn on written request from the applicant or their agent.
There is no fee to withdraw a request for delay of registration. The Industrial Design Office will not issue a refund for a withdrawn request.
Relevant provision(s): 24 IDR.
An application may be withdrawn at any time prior to registration, upon written request. The request must clearly identify the application that is to be withdrawn. The filing fee will not be refunded.
Note that the Act does not provide for the withdrawal of a registration. If the Industrial Design Office receives the request after a design has been registered, the registration will not be withdrawn. However, the request for withdrawal will be acknowledged and placed on file. With respect to a registration, relief may lie with the Federal Court in accordance with subsection 22(1) of the Act. See section 19.06 of this Manual for related information on expungement.
An application will not be made available to the public if it is withdrawn at least two months before the prescribed date. However, applicants are encouraged to submit a request to withdraw an application as early as possible to ensure it is technically feasible to withdraw the application. Information on the prescribed date for making an application available to the public is provided in section 20.01 of this Manual. If the application is withdrawn less than two months before the prescribed date, it will nevertheless be made available to the public.
Relevant provision(s): 8.3(5) IDA; 32(4) IDR.
The Industrial Design Office examines an application for the registration of a design to assess if:
When an application is filed, the Industrial Design Office will conduct an examination to ensure it was filed correctly. The Industrial Design Office will first determine the filing date of the application. Following this, the design will be classified based on the particular type of article to which the design is applied and formalities will be examined. Formality issues can be raised at any time prior to registration. If there are no formality issues, or they have been addressed following a report, the Industrial Design Office will examine to ensure the subject matter of the design is registrable.
The Industrial Design Office also will consider that the applicant or his predecessor in title created the design. Once these steps are completed, the Industrial Design Office will conduct a search for prior art and will assess the novelty of the design.
“Design” or “industrial design” is defined in section 2 of the Act as meaning “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”
.
Features of “shape” and “configuration” refer to the finished article’s 3D structure. “Shape” refers to the external form
[4]
or outline
[5]
of the article and “configuration” refers to the arrangement of the parts that make up the finished article.
[6]
Features of “pattern” and “ornament” refer to the two-dimensional elements placed on the finished article for decorative purposes. A “pattern” refers to repeating decorative elements which are all the same. Finally, “ornament” refers to any other decorative element placed on the surface of the finished article.
The Industrial Design Office considers “and any combination of those features” in the Act’s definition of “industrial design” to mean that a design may be comprised of any combination of shape, configuration, pattern or ornament.
A finished article means anything that is made by hand, tool or machine. It does not need to be a useful article. The Industrial Design Office applies this definition broadly and considers that a design can be applied to any physical embodiment.
[7]
If an application is unclear about what the article is and how it should be classified, the Industrial Design Office will issue an objection to the design‘s registration and require additional information or modifications to be made to the name of the finished article.
In an application for the registration of a design, it is recommended that the “finished article” be identified by a name generally known and understood by the consumer to avoid ambiguity as to the scope of the design. Limited references to function or construction principles may be accepted provided they are not overly descriptive. In determining whether the design is fully disclosed, the Industrial Design Office takes into account the representation of the design, any statement or description provided and the name of the finished article. Should the scope of the design be unclear, the Industrial Design Office will issue an objection to the design’s registration and require additional information or amendments.
The name of the finished article must identify the complete article and not its component parts. When a design is applied to an article with multiple independent parts that assemble to form one finished article, the article should be identified as a single entity.
If the name of the finished article implies that the application contains more than one design or variants, the name will not be accepted. See section 8.04 of this Manual for more information.
Designs applied to component parts of an article may be the subject of separate applications. For example, the Industrial Design Office considers that a light bulb is a finished article even though it is used as part of a lamp because it is sold separately from the lamp. On the contrary, the heel of a sock cannot itself be an article as it cannot be sold separately from a sock.
As of June 14, 2024, the Industrial Design Office takes the position that buildings and structures, including those constructed on site, may be acceptable finished articles to which a design can be applied. Designs applied to buildings or structures were previously not registrable as they were not considered to be finished articles to which a design could be applied. Applications for registration of a design applied to a building or structure will be processed and examined as any other application and are not subject to any particular requirement due to the nature of the finished article. Be advised that this practice does not extend to the protection of architectural plans in and of themselves as they do not constitute in the application of a design to a building or structure.
Note that the revised practice is applicable to all pending applications, regardless of their filing date. Applicants with buildings-related files for which an examination report has been issued and is still outstanding must respond to the outstanding objection nonetheless, asking for re-examination under this revised practice. If the applicant does not reply to the report by the due date, the application will be deemed to be abandoned. See section 15.01 of this Manual for more information on abandonment.
The features of shape, configuration, pattern and ornament must “appeal to and be judged solely by the eye”. This assessment is from the perspective of the informed consumer who is familiar with the relevant market field.
[8]
This requirement is intended to exclude designs where a consumer chooses an article because the design is useful to them and not for its visual appeal.
[9]
This “appeal” does not need to be judged in an aesthetic or artistic sense. The visual appeal must only attract the attention of the consumer.
[10]
A design is not registrable if it is composed only of features that are dictated solely by a utilitarian function.
[11]
A design is not registrable if it is contrary to public morality or order.
The Industrial Design Office considers whether an application is “contrary to public morality” on a case-by-case basis, taking into account generally accepted mores of the time.
As an example of objection on the basis of public order, the Industrial Design Office may refuse to register designs that incorporate images of the 11-point Maple Leaf (Example 36 - Fig. 1) such as the Canadian flag (Example 36 - Fig. 2) or the Official Canadian Coat of Arms (Example 36 - Fig. 3). For more information, please consult the Commercial Use of Canadian Symbols page on the Government of Canada’s Website.
|
Example 36 – Official Canadian symbols
|
|
|
Fig. 1
|
Fig. 2
|
|
Fig. 3
|
|
Relevant provision(s): 2, 7, 11.1 IDA.
If after examination, the Industrial Design Office has reasonable grounds to believe that a design is not registrable, it will send the applicant a report indicating its objections to registration. Applicants will be invited to respond to the objections no later than three months after the date of the report.
If the response does not overcome all of the objections, the Industrial Design Office may send another report raising new objections or maintaining previous ones, giving the applicant another opportunity to respond to the outstanding objections. Alternatively, the Industrial Design Office may send a Final Examination Report, which will identify the remaining objections to registration and invite the applicant to provide final arguments in writing. See section 18 of this Manual for more information on the Final Examination Report, review, refusal and appeal.
The applicant must reply to the objections set out in a report, including the Final Examination Report, no later than three months after the date of the report. This time period to reply may be extended by six months by submitting a request for extension of time to the Industrial Design Office. Only one request may be made in respect of a particular report.
Note that the request must be submitted before the end of the deadline stated in the report otherwise; the application will be deemed abandoned. See section 15.01 of this Manual for more information on abandonment.
During the examination of an application for the registration of a design, a Hague application or national application may be relevant to an objection but cannot yet be disclosed to the public. If this occurs, the applicant will be informed that a relevant application has been identified but cannot be disclosed yet. Once the relevant application has been made available to the public or is withdrawn, the Industrial Design Office will issue a report if necessary.
During the examination of an application for the registration of a design, prior art dated between the requested priority date and the filing date may be relevant. If this occurs, the Industrial Design Office will request the applicant to either submit a certified copy of their priority documents or make a copy of the previously regularly filed application available on the WIPO Digital Access Service. For more information, see section 8.07.08 of this Manual.
Relevant provision(s): 5 IDA; 22(1) to (5) IDR.
If the applicant does not reply in good faith to a report in the time period allotted, the application is deemed to be abandoned. Once the application has been abandoned, the Industrial Design Office will send a "Notice of Abandonment" to the applicant as a courtesy. The notice will set out the reason(s) for abandonment and the requirements for reinstatement.
An abandoned application may be reinstated provided that the applicant makes the request within six months after the day on which the application is deemed to be abandoned. Such request must be accompanied by the following:
If these requirements are not met within the prescribed period, the application will become "inactive" and no further action can be taken.
Relevant provision(s): 22(6) and (7) IDR.
The Industrial Design Office determines whether a design is novel by:
The priority date of a design is the filing date of the application in Canada, unless a request for priority is made in accordance with the Regulations. See section 8.07.01 of this Manual for additional information on request for priority.
The features that constitute the design are determined by the representation of the design, the name of the finished article to which the design is applied and any accompanying statement.
For example, if the representation of the design depicts a bottle with a pattern applied to it and a statement limits the design to the feature of shape of the bottle and not the pattern, then only the shape is relevant for the novelty assessment. If, on the other hand, the application is not limited to any particular feature, then all the features of the design as a whole will be considered when assessing novelty.
It is also possible to limit the design to a part of the article. See section 8.06.02 of this Manual for more information.
Subject to the novelty exceptions described in the following section of this Manual, relevant prior art includes any design applied to the same or analogous finished article that was made available to the public (disclosed to any person) in Canada or elsewhere before the priority date of the design as well as any design disclosed to the Industrial Design Office in an application with an earlier priority date. Generally, the Industrial Design Office considers that articles are analogous if they share the same function.
[12]
When a design in an applicant’s earlier filed application does not differ substantially from a design in the same applicant’s later filed application, registration of the later filed design would generally be blocked by the earlier one for lack of novelty. If however, the filing date of the later filed application is no later than 12 months after the filing date of the earlier filed application, that application will not be considered in the prior art as described by section 31 of the Regulations.
Another exclusion is described in paragraph 8.2(1)(a) of the Act. Essentially, this provision creates a grace period for designs that have been made available to the public, in Canada or elsewhere, by either the person who filed the application, a predecessor in title or by a person who obtained, from them, knowledge of the design. The Industrial Design Office will not include in the prior art a design that was disclosed less than 12 months before the priority date of the design in the application. Please note that not all jurisdictions allow for this grace period. Therefore, applicants should carefully consider the timing of their public disclosure.
The Industrial Design Office compares the design in an application with the prior art in order to assess if the same or a substantially similar design is 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.
It is difficult to define with precision what a substantial change is and by how much a design needs to differ from the prior art before it is considered novel. In some cases, the jurisprudence indicates that a new design may be one in which the difference from previous designs is very slight.
[13]
In others, simple variations,
[14]
a slight change of outline or configuration, or an unsubstantial variation is not sufficient to enable the author to obtain registration.
[15]
Laddie, Prescott and Victoria, in The Modern Law of Copyright and Designs, stated that:
It is somewhat unsafe to rely upon expressions used by a court in one case when deciding on validity as laying down a reliable test for use in other cases. After all, the courts are trying to explain in words what is normally incapable of being so explained. What amounts to sufficient novelty is a matter of feel rather than science. At best looking at the words used and the decision reached in past cases gives an indication of the considerations which the courts have borne in mind when answering the simple question
‘is this design too close to the prior art?’. [16]
To assess whether a design is novel remains a question of fact that is dependent on the nature and character of the design.
[17]
The Industrial Design Office conducts a visual test from the perspective of the eye of the informed consumer.
[18]
The courts have developed techniques to assess the similarities and differences between two designs:
There is no requirement that the “concept, idea or expression” of the design be novel. It is only required that the design applied to a finished article be new and substantially different from the prior art. A design can be new even if it is made by blending known designs together as long as the combination of these known designs creates a design that is new and substantially different from the prior art.
[25]
Generally, the Industrial Design Office conducts a prior art search six months after the filing date of an application because of the possibility of subsequent filed applications having earlier priority dates. However, the Industrial Design Office may conduct the search as early as six months from the priority date of the design that is the subject of the application if the applicant submits a certified copy or makes available a copy of the previously regularly filed application through WIPO’s Digital Access Service for each previously regularly filed application on which the priority claim is based. Please note that the date from which the Industrial Design Office may conduct the search will vary depending on circumstances of the case at hand, as well as processing times. To maximize its benefit, search based on priority can be combined with a request for advanced examination. See section 10 of this Manual for more detail on advanced examination.
A certified copy of the foreign application and a certificate from the foreign office showing the filing date of the application can be submitted to the Industrial Design Office in a language other than English or French, as long as they are accompanied by a translation of the documents into English or French. If not, the Industrial Design Office will not be able to assess the documentation nor will it advance the search for prior art.
The design disclosed in the priority document must be for the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether or not the design is considered to be the same. If your application contains variants, each of them must be adequately supported by the priority documentation provided. If a variant is not supported, the search will be conducted no earlier than six months after the Canadian filing date.
Relevant provision(s): 7(b), 8, 8.2(1)(a) to (c) IDA; 31 IDR.
An application may be amended at any time prior to the registration of the design except in the circumstances outlined below:
An application may not be amended to change the identity of the applicant except, for a national application, to correct an error in the applicant’s name or as a result of the recording of a transfer.
An application may not be amended to add a representation of a new design. For example, it is unacceptable to add a new design or a new variant in the application. The addition of a photograph or reproduction of the design in the application is considered to be a change to the design, not the addition of a representation of a design. Such a change is subject to the requirements of section 17.02.03 of this Manual.
The representation of a design or any statement may not be amended if it results in a substantial change to the design as filed.
An application may not be amended to add an indication that it is a divisional application after three months have passed since the date on which the application was received.
An application may not be amended to change the name of the finished article to the name of a substantially different finished article, on or after the date on which the application has been made available to the public.
A request to correct a clerical error is treated as a request to amend the application. For correcting obvious errors affecting a registration, see section 19.05 of this Manual.
Relevant provision(s): 25 IDR.
Objections to registration are set out in examination reports. If these objections are not overcome, a Final Examination Report will be issued by the Industrial Design Office. This is a final report by the industrial design examiner maintaining the objections to registration. If the applicant disagrees with the outstanding objections, the Industrial Design Office must receive final arguments in writing within three months after the date of the report. Upon receipt of a response, the application will be reviewed by a subject-matter expert from the Industrial Design Office. If the applicant does not reply within the deadline, the application will be deemed to be abandoned. See section 15 of this Manual for more information on abandonment and reinstatement.
Where final arguments have been submitted in a response to a Final Examination Report, a subject-matter expert of the Industrial Design Office will review the application for the registration of a design. This review process applies to all applications regardless of their filing date. It is carried out using all documents on file, including the applicant’s final arguments. There are no oral hearings available.
If the objections are overcome during the review, the Examiner’s objections will be withdrawn and the application will return to the Examination Section for further prosecution or registration, as applicable.
If the objections are not overcome during the review, the application will be considered for refusal by the Minister in accordance with subsection 6(1) of the Act. From this point on, no arguments or amendments may be submitted. Should the application for registration be refused, the applicant will be notified through a final Refusal.
If the applicant disagrees with a Refusal from the Industrial Design Office on a national application, an appeal to the Federal Court may be available under section 22 of the Act. See section 19.06 of this Manual for more details.
Specific rules apply to appeal a decision in regards to a Hague application. See section 28
of this Manual for more details.
Relevant provision(s): 6(1), 22 IDA
If the Industrial Design Office is satisfied that the design is registrable, it will proceed to registration unless a delay of registration is requested. The Industrial Design Office will send the applicant a registration package containing:
The exclusive right begins on the date of registration and ends on the later of the end of 10 years after registration and 15 years from the Canadian filing date. To maintain the exclusive right for its complete duration, a maintenance fee is required. See section 21 of this Manual for more details on the maintenance of a registration.
Specific rules apply to the term of the exclusive right in respect of a Hague registration. See section 27.02 for more information.
It is possible to delay the registration of a design upon request of the applicant and in respect of an application other than a Hague application. See section 11 of this Manual for more information.
Particulars of a registration will be entered in the Register of Industrial Designs (the Register). The Register will contain prescribed information such as, among other things, the filing date of the application, particulars of any transfers, information pertaining to the registered proprietor and the date of registration of the design.
Hague registrations will not be found in the Canadian Register of Industrial Designs. Particulars of a Hague application or a Hague registration will be recorded in the International Register. See section 25 of this Manual for more details on the International Register.
An error in a registration may be corrected within six months of registration if the error is obvious from documents relating to the registered design that are in the Minister’s possession at the time of registration. After six months, a correction to a registration may only be possible under the authority of the Federal Court.
A correction cannot be made after the six-month period from registration has ended, even if the request for correction was received prior to the end of that period. Accordingly, it is recommended that the registered proprietor or the appointed agent verifies the registration package (see section 19.01 of this Manual) and request any required corrections as soon as possible.
Pursuant to section 22 of the Act, the Federal Court may add, expunge or vary any entry in the Register.
Pursuant to section 23 of the Act, the Federal Court may grant the registered proprietor of a registered design leave to add to or alter their design in any particular not being an essential particular.
Unless there is a more appropriate third party, His Majesty the King as represented by the Minister of Industry (the Minister) may be named as the defendant in an action initiated under section 22 of the Act and the Attorney General of Canada may be named as the respondent in an application under section 23 of the Act.
Rule 127 of the Federal Courts Rules requires a statement of claim or notice of application to be served personally.
The process of personal service is set out in Rules 128 to 137 of the Federal Courts Rules. It is important to note that leaving a court document at CIPO’s mailroom, sending it by courier, mail, or facsimile to CIPO, or submitting it online using CIPO’s Industrial Design E-Services application, does not constitute personal service on the Minister or the Attorney General of Canada.
In accordance with Rule 133 of the Federal Courts Rules, personal service of an originating document on the Minister or the Attorney General of Canada is effected by filing the original document and two paper copies of it with the Federal Court Registry.
Notice of any intended application to the Federal Court for leave to add to or alter a registered design under subsection 23(1) of the Act must be given to the Minister.
Notice may be given in accordance with the written communications rules set out in the Regulations and CIPO’s practice with respect to Correspondence Procedures. See also section 1 of this Manual.
By way of example, notice of a notice of application initiated under section 23 of the Act may be given to the Minister by regular mail at the following address (paper copy only):
Canadian Intellectual Property Office
Attn: Minister of Industry, Trademarks and Industrial Designs Branch, Policy and Legislation Division
Place du Portage I
50 Victoria Street, Room C-114
Gatineau, QC K1A 0C9
A certified copy of every 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, must be transmitted to the Minister by an officer of the Registry of the Court. The Register of Industrial Designs must then be rectified or altered in accordance with that order.
Even so, if the Minister or the Attorney General of Canada was not a party to a judgment or an order made by the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court relating to industrial designs, it is encouraged for a party to that judgment or order to send a copy to the Minister.
Specific rules apply to the invalidation of Hague registrations. See section 29 of this Manual for more details.
Relevant provision(s): 3, 3.1, 10(1), 22 to 24 IDA; 13, 40(1) IDR; 127 to 137 FCR.
An application and its related documents will be made available to the public on the earlier of the date of registration of the design and the day that is 30 months after the filing date of the application or from the earliest priority date of any design in the application. Note that this means that an application could be made available to the public prior to registration.
If a document provided to the Industrial Design Office relates to more than one application or registration, the document will be made available to the public at the earliest date that an application or registration to which that document relates is made available to the public.
The prescribed date for making an application available to the public does not apply to Hague applications and divisional applications resulting from a Hague application. Rather, these applications and documents are made available to the public on the date of publication set out by the International Bureau. Generally, these applications will be public during the course of prosecution before the Industrial Design Office. See section 24.01 of this Manual for more details.
If an application is withdrawn at least two months before the date on which it must be made available to the public, the application and its related documents will not be made available to the public. Otherwise, the application and its related documents will be made available to the public. See section 20.01.01 of this Manual for more information on the prescribed date on which an application is made available to the public.
Where there is a request for priority made in respect of an application, the earliest date of priority will affect the date on which an application is made available to the public. If the priority date is changed, the date on which an application is made available to the public will be reassessed. If a request for priority is withdrawn at least two months before the date on which an application should have been made available to the public, this date will be recalculated without taking into account that priority request.
Once an application is made available to the public, it will be entered in the Canadian Industrial Designs Database. The database contains information pertaining to industrial designs registered in Canada since 1861.
This database is for information purposes only. Recent updates, corrections or changes may not be included at time of viewing due to mail processing delays and as the information is updated only once a week.
Hague applications and registrations will be listed in the Canadian Industrial Designs Database and users will be redirected to WIPO’s Hague Express database for detailed information pertaining to international registrations.
Relevant provision(s): 8.3 IDA; 32 IDR.
The proprietor of a design must pay a maintenance fee in order to maintain the exclusive right accorded by the registration of the design. Generally, the fee must be paid by the proprietor or any person authorized by them, no later than five years after the registration date. If the maintenance fee is not paid within the five years (exception for late maintenance, see section 21.01.02), the exclusive right will be deemed to have expired. As a courtesy, the Industrial Design Office will send a maintenance reminder about 6 months before the end of the 5-year period. Nonetheless, please note that the Industrial Design Office is not required to send the letter referenced above and that the registered proprietor remains responsible for the maintenance of the exclusive right.
The proprietor may benefit from a six-month grace period after the end of the five-year period to maintain an exclusive right if the proprietor or any person authorized by them also pays an additional late fee along with the maintenance fee. If the maintenance fees and the late fee are not paid within that period, the exclusive right will be deemed to have expired as of five years after registration.
The Industrial Design Office does not record the maintenance of a Hague registration. See section 33 of this Manual for more information on the maintenance of a Hague Registration.
Relevant provision(s): 10(2) IDA; 33 IDR.
Under the Article 3 of the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (hereafter referred to as the “Geneva Act”), the entitlement to file an international application is limited to any person that is a national, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in a contracting party, including Canada.
An applicant for which the state of origin is Canada can designate a contracting party that is a signatory of the Geneva Act. A list of all contracting parties is available from WIPO’s website at http://www.wipo.int/hague/en/members/.
An international application must be filed directly with WIPO’s International Bureau and must designate the contracting parties in which protection is sought. The international application may be filed either on paper or through WIPO’s electronic filing interface. It may be filed in English, French or Spanish and must contain all the mandatory content prescribed under the Geneva Act and its related regulations. For more information on how to file an international application, please consult WIPO’s website at http://www.wipo.int/hague/en/guide/.
The International Bureau will verify that an international application complies with the prescribed formal requirements. Examples for formal requirements include: name and address of the applicant, no more than 100 industrial designs of the same class were included in the international application and the appropriate fees are paid for each designated contracting party. If any formal requirement is not met, the International Bureau will inform the applicant of an irregularity and invite them to make the required corrections within three months. If the formal requirements are met, the international application will be recorded in the International Register, will become an international registration and, in due course, will be published in the International Designs Bulletin.
WIPO manages the publication of an international registration. By default, an international registration is published on the International Bulletin 12 months after the date of its registration on the International Register. Alternatively, the applicant may request immediate publication or deferment of publication for up to 30 months.
The period of deferment available will depend on the laws of the various contracting parties designated in the international application. Contracting parties may provide up to 30 months of deferment, some may provide for no deferment of publication at all. Canada allows for the maximum period of deferment allowed under the Hague Agreement, which is 30 months from the filing date or, if there is a priority request, from the earliest date of priority. If the international registration includes the designation of contracting parties that provides for less than 30 months of deferment, publication will take place on the expiry of the shortest of these periods.
Generally, once Canada has been designated as a contracting party, the Industrial Design Office will receive information about the international registration once it has been published in the International Bulletin. Following which, the Industrial Design Office will acknowledge receipt of the international registration and proceed with the examination of the file to ensure substantive requirements of the Canadian legislation are met. In cases where an international registration has not yet been published, Canada will receive a confidential copy to ensure the accuracy of the search for novelty, but adopting WIPO’s best practices, will only proceed with substantive examination once it is published in the International Bulletin.
Anyone wishing to obtain extracts from the International Register, certified or uncertified copies of any recording made in the International Register or of items in the file of an International Registration must make such request directly to the International Bureau. See section 6.03 of this Manual.
The International Register and items in the file of an International Registration are evidence of their contents. A copy certified by the International Bureau is evidence of the particulars of the recording or item and is admissible in any court.
Relevant provision(s): 40(2) and (3), 46 IDR
An international registration may contain up to one hundred designs from the same class of the International Classification of Locarno, as opposed to a Canadian industrial design application which must be limited to one design applied to a single finished article or set or to variants applied to a single finished article or set. In order to accommodate this requirement, CIPO will divide each design that is the subject of an international registration designating Canada into its own application. Such an application is deemed to have been filed and is known as a “Hague application”.
The applicant may file a divisional application directly with the Industrial Design Office for any design applied to a finished article that was disclosed in the original Hague application on its filing date. The finished article must also have been disclosed in the original application. See section 8.08 of this Manual for more information.
A divisional application resulting from a Hague application is considered to be a national application. Accordingly, it must be filed in accordance with the Act and will be processed and examined according to the practices applicable to national applications.
Such divisional application is separate from the Hague application from which it stems, including with respect to the payment of any fees.
The filing date of a Hague application or of a divisional application resulting from a Hague application is the date of its corresponding International Registration.
The holder means the person in whose name an international registration is recorded in the International Register. The holder of the corresponding international registration will be deemed to be the applicant of the corresponding Hague application and, after registration, the registered proprietor of the corresponding Hague registration.
Relevant provision(s): 20(1), 41(1) and (4), 42(2), 44(5) IDR.
If there are reasonable grounds to believe that a design is not registrable, an examination report setting out objections to registration will be sent to the International Bureau in the form of a Notification of Refusal. This Notification of Refusal will be recorded by the International Bureau and forwarded to the holder. From that point on, all communications regarding the Hague application will occur directly between the holder and the Industrial Design Office.
A courtesy copy of the Notification of Refusal will be sent to the agent appointed before the Industrial Design Office, if one is appointed. Nonetheless, please note that the Industrial Design Office is not required to send a courtesy copy and that the applicant remains responsible for responding to the Notification of Refusal in the manner outlined under section 26.03 of this Manual.
Note that subject matter belonging to Class 32 of the International Classification of Locarno (e.g. graphic symbols or logos) generally cannot receive protection under Canadian law.
The Industrial Design Office has 12 months from the date of publication of the international registration in the International Bulletin to issue a Notification of Refusal. If a Notification of Refusal is not sent within this time period, the design will be deemed to be registered. In that case, the date of registration of the design will be the first day after the end of the 12-month period.
The Notification of Refusal that is sent in respect of a Hague application is equivalent to the first examination report sent under the national regime. It is not a final refusal under 6(1) of the Act.
If the applicant disagrees with the objections outlined in the examination report attached to the Notification of Refusal, they must submit a response directly to the Industrial Design Office, not to the International Bureau, within three months of the date of the Notification of Refusal. The response may be in English or French and the Industrial Design Office will respond in the correspondent’s language of choice. The applicant’s response to the Notification of Refusal is equivalent to a response to an examination report issued under the national regime. As such, the same remedies are available for both national and Hague applications. For example, the applicant may amend its application or submit an argument disagreeing with the objections.
After the Notification of Refusal, subsequent communication relating to the prosecution of the Hague application will continue between the applicant and the Industrial Design Office. For example, subsequent examination reports will be sent directly to the applicant, who must in turn reply directly to the Industrial Design Office. The applicant may appoint an agent to represent them in business before the Industrial Design Office, see section 2 of this Manual for more information.
If the applicant fails to overcome the objection to registration, the Industrial Design Office may send another report raising new objections or maintaining previous ones, giving the applicant another opportunity to respond to the outstanding objections. Alternatively, the Industrial Design Office may send a Final Examination Report, which will identify the remaining objections to registration and invite the applicant to provide final arguments in writing. This is a final report by the industrial design examiner maintaining the objections to registration. If the applicant disagrees with the outstanding objections, the Industrial Design Office must receive final arguments in writing within three months after the date of the report. Upon receipt of a response, the application will be reviewed by a subject-matter expert from the Industrial Design Office. If the objections are not overcome, the application will be considered for refusal by the Minister in accordance with subsection 6(1) of the Act. From this point on, no arguments or amendments may be submitted. Should the registration be refused, applicants will be notified through a final Refusal. See section 18 of this Manual for more information on the Final Examination Report, review and Refusal.
If the objections to registration are overcome and the Hague application is registrable, the Industrial Design Office will send a Statement of Grant of Protection in respect of the design to the International Bureau. If the objections to registration are overcome and the Hague application is amended before the Industrial Design Office, the amended Hague application will be communicated to the International Bureau along with the Statement of Grant of Protection. See section 27.01 of this Manual for more information on the registration of a Hague application.
Relevant provision(s): 22(2) and (3), 42, 44(3) and (4)(b) IDR
If a Hague application is registrable, the Industrial Design Office will send a Statement of Grant of Protection in respect of the design to the International Bureau. Such application is deemed to have been registered under the Act and is known as a “Hague registration”. The date of registration of the design is the date of the Statement of Grant of Protection.
A courtesy copy of the Statement of Grant of Protection will be sent to the agent appointed before the Industrial Design Office, if one is appointed. Nonetheless, please note that the Industrial Design Office is not required to send a courtesy copy.
The term of protection begins, for a Hague registration, on the date of its registration in Canada and ends on the later of the end of 10 years after registration in Canada or the end of 15 years after the date of international registration. The term may also end upon the expiry, in respect of Canada, of the international registration in respect of that particular design.
Relevant provision(s): 44(2) to (4)(a), 47(2) IDR.
Unless there is a more appropriate third party, the Attorney General of Canada may be named as the respondent in an appeal under subsection 50(2) of the Regulations.
Rule 127 of the Federal Courts Rules requires a notice of appeal to be served personally.
The process of personal service is set out in Rules 128 to 137 of the Federal Courts Rules. It is important to note that leaving a court document at CIPO’s mailroom, sending it by courier, mail, or facsimile to CIPO, or submitting it online using CIPO’s Industrial Design E-Services application, does not constitute personal service on the Minister or the Attorney General of Canada.
In accordance with Rule 133 of the Federal Courts Rules, personal service of an originating document on the Minister or the Attorney General of Canada is effected by filing the original document and two paper copies of it with the Federal Court Registry.
When appealing a decision of the Minister under subsection 50(2) of the Regulations, even though the Minister is not to be named as a respondent, Rules 127 and 339 of the Federal Courts Rules require that the notice of appeal be personally served on the Minister and the Attorney General of Canada.
If the final judgment given in the appeal reverses the refusal, the Industrial Design Office will send a statement of grant of protection in respect of the design to the International Bureau.
Relevant provision(s): 6(1) IDA; 50(2) and (3) IDR; 127 to 137 and 339 FCR.
The Federal Court of Canada has exclusive jurisdiction to grant an order invalidating a Hague registration, in so far as it relates to Canadian rights. Any interested person may petition the Federal Court for an order invalidating a Hague registration.
A certified copy of every judgment or order of the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court relating to a Hague registration must be sent to the Minister.
Even so, if the Minister or the Attorney General of Canada was not a party to a judgment or an order made by the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court relating to industrial designs, it is encouraged for a party to that judgment or order to send a copy to the Minister.
Once an invalidation order is no longer subject to appeal, the Industrial Design Office will notify the International Bureau in order for the invalidation to be recorded in the International Register. Invalidation revokes or cancels the effects, in Canada, of a Hague registration.
Relevant provision(s): 50(4) to (6) IDR.
An applicant must submit a request for priority through the International Bureau of WIPO. The Industrial Design Office will not accept priority requests for Hague applications that are submitted directly to the Industrial Design Office.
A request for priority may relate to all or some of the designs included in the International Registration. The applicant will be deemed to have made a request for priority if the corresponding international registration contains a declaration claiming priority together with an indication of the filing date and the name of the country or office of filing of the previously regularly filed application onto which the request is based.
Corrections to the filing date, the name of the country or office of filing or the number of a previously regularly filed application for a priority claim can only be done through the International Bureau.
An applicant may withdraw a request for priority on a Hague application. Such request must be filed directly with the Industrial Design Office. See section 8.07.03 of this Manual for more information on the withdrawal of a request for priority.
Relevant provision(s): 26(1), 28, 45(2) and (3) IDR.
Transfers of ownership affecting any Hague applications or registrations must be recorded through the International Bureau.
In cases where the transferee cannot obtain the signature of the transferor, the Industrial Design Office will provide an attestation that the transferee appears to be the successor in title of the holder if the holder is a national of Canada or, has a domicile, a habitual residence or real and effective industrial or commercial establishment in Canada, and if the transferee submits satisfactory evidence that the transferee appears to be the successor in title of the holder of the international registration.
A request for attestation must be accompanied by a statement to the effect that the transferee made efforts to obtain the signature of the holder or their representative and that these efforts were unsuccessful.
Relevant provision(s): 48, 49 IDR.
Where the International Bureau, acting on its own initiative or at the request of the holder, considers that there is an error in the International Register concerning an international registration, it will modify the International Register and inform the holder accordingly.
If the Industrial Design Office considers that the effects of a correction cannot be recognized, a notification of refusal of the effects of the correction together with detailed reasons will be sent to the International Bureau within 12 months after the date on which the correction was published in the International Bulletin. The International Bureau will then forward the notification to the holder. The holder may reply directly to the Industrial Design Office within three months from the date of the notification. If, after taking into consideration the reply provided by the holder, the Industrial Design Office considers that the correction can be recognized, it will send a withdrawal of refusal of the effects of the correction to the International Bureau. Each correction made by the International Bureau will be assessed on a case-by-case basis.
Relevant provision(s): 51(1) to (3) IDR.
The maintenance of a Hague registration cannot be recorded with the Industrial Design Office. The registered proprietor must proceed with the renewal of an international registration in respect of Canada through the International Bureau. Note that the holder may choose to renew all, some, or none of the designs in respect of Canada.
The fees due for the renewal must be paid in Swiss Francs directly to the International Bureau. The holder will have to pay a basic fee plus different fees depending on each designated contracting party as well as on the number of designs contained in the international registration. In respect of Canada, the declared fee for renewal is equivalent to the fee for the maintenance of a registration of a design in Canada.
An international registration is valid for an initial period of five years from the date of international registration and may be renewed for additional five-year periods. Six months before the expiry of each five-year term, the International Bureau will send a notice indicating the date of expiry of the international registration, along with the maximum term of protection for the contracting parties designated in the international registration. Note that the fact that the holder or its representative did not receive the notice cannot constitute an excuse for failure to comply with any time limit concerning the renewal of an international registration.
Within five years after the date of international registration, the holder may choose to renew the international registration for some or all designated Contracting Parties and for one or more of the industrial designs that are the subject of the international registration. Upon request and payment of the required renewal fees, the International Bureau will renew the international registration accordingly. In respect of Canada, while this payment will cover the exclusive right for the remainder of its duration, the holder is still required to make a request for renewal every five years until the exclusive right granted is expired. This will ensure that the international registration remains maintained in respect of Canada. No fees will be required for these subsequent renewals.
If using a paper form, the holder may pay the fees to the International Bureau any time before the registration expiry date. If using the eHague interface on the WIPO website, the renewal may be requested no earlier than three months before the expiry of the international registration.
The renewal fees should be paid to the International Bureau by, at the latest, the date of expiry of the registration. However, payment may still be made within six months from the date on which the renewal of the international registration is due, provided that the surcharge specified in the Schedule of Fees is paid at the same time. If the required fees are not paid on time, the international registration will be deemed to have expired in respect of Canada.
Relevant provision(s): 47(1) IDR.
This section details how the Industrial Design Office will treat applications with a filing date prior to the coming into force of the Act as well as designs already registered under the former Act. For greater certainty, the former Act and the former Regulations are the Act and Regulations that were in force prior to November 5, 2018).
An application whose filing date has been established under the former Act will be dealt with in accordance with provisions from the former Act. However, some exceptions apply.
In accordance with subsection 10(1) of the former Act, the term limited for the duration of the exclusive right is 10 years beginning on the date of registration of the design.
Section 5 of the former Act stipulates that there must be examination prior to registration, and outlines how the Industrial Design Office must proceed with the report of objections, the abandonment and the reinstatement of an application. This section of the former Act does not apply. Rather, it is replaced by section 5 of the Act, which outlines that examination shall occur in accordance with the Regulations; more specifically subsections 22(2) to 22(7).
These rules replace the ones previously found in section 5 of the former Act and contain essentially the same information. See sections 14 and 15 of this Manual for the practices applicable to the report of objections, abandonment and reinstatement.
Section 13 of the former Act stipulates that designs are assignable by an instrument in writing, which shall be recorded by the Industrial Design Office on payment of the prescribed fees. This section of the former Act does not apply. Rather, it is replaced by section 13 of the Act, which outlines that designs are transferable and that the Industrial Design Office shall record or register the transfer of a design on request and in accordance with the Regulations, more specifically section 34 which outlines that such a request should include the name and postal address of the transferee and the fee prescribed. See section 3 of this Manual for the practice applicable in relation to transfers.
Section 20 of the former Act gives the Industrial Design Office authority to correct clerical errors. In accordance with section 30 of the Act, this section no longer applies. Under the Act or Regulations, this section has been repealed and there are no specific provisions to replace the former section 20. As such, clerical errors may generally be corrected by way of amendment. For applications filed before the coming into force of the Act, the applicable amendment provision is found in section 16 of the former Regulations. For applications filed on or after the coming into force of the Act, the applicable amendment provision is found in section 25 of the Regulations.
Section 21 of the Act is a new section that applies to all applications, including applications filed prior to the coming into force of the Act. This section allows time periods to be extended, by operation of law, to the next day on which the Industrial Design Office is open to the public. Specific days on which the Industrial Design Office is closed are prescribed under section 36 of the Regulations. The Minister may also, on account of unforeseen circumstances and if he or she is satisfied that it is in the public’s interest, designate a day on which the deadlines will be extended. See section 1.07 of this Manual for the practice applicable in relation to extension of deadlines.
Section 24.1 of the Act is a new section that applies to all applications, including applications filed prior to the coming into force of the Act. This section ensures that any document, information or fee may be provided in electronic form and by electronic means. See section 1.05 of this Manual for practices applicable in relation to electronic communications.
In accordance with subsections 11(1) and 9(2)(a) to (c) of the former Regulations, for an application received before the coming into force to receive a filing date, the applicant must have submitted to the Industrial Design Office:
In accordance with section 31 of the Act, if the filing date of an application received before, but processed after the coming into force of the Act cannot be established because the requirements set out above were not met, the application will be deemed never to have been filed. Consequently, the applicant will have to file the application again. As the application will be received after the coming into force of the Act and Regulations, the filing date requirements that apply are the ones set out in section 7 of this Manual.
Any matter arising in respect of a design registered under the former Act will be dealt with in accordance with provisions from the former Act. However, some exceptions apply.
Section 3 of the former Act stipulates that there shall be a register called the Register of Industrial Designs for the registration of industrial designs. This section of the former Act does not apply. It is replaced by section 3 of the Act which stipulates that there shall be a Register of Industrial Designs and that the Register is evidence of its contents and that a certified copy of an entry can serve as evidence in any court.
Section 13 of the former Act stipulates that designs are assignable by an instrument in writing, which shall be recorded by the Industrial Design Office on payment of the prescribed fees. Similarly to the transitional measures in place for transfers of applications, section 13 of the former Act does not apply to registered designs. Rather, it is replaced by section 13 of the Act, which outlines that designs are transferable and that the Industrial Design Office shall record or register the transfer of a design on request and in accordance with the Regulations, more specifically section 34 which outlines that such request must include the name and postal address of the transferee and the fee prescribed. See section 3 of this Manual for the practice applicable in relation to transfers.
Section 20 of the former Act gives the Industrial Design Office authority to correct clerical errors. In accordance with section 32 of the Act, this section no longer applies. The correction of a clerical error affecting registered designs, whether they were registered before the coming into force of the Act or after, are made under the authority of section 3.1 of the Act. See section 19.05 of this Manual for more information on how to correct registrations.
As it is the case for applications, section 21 of the Act is a new section that applies to all registrations, including registrations filed prior to the coming into force of the Act. This section allows time periods to be extended, by operation of law, to the next day on which the Industrial Design Office is open to the public. Specific days on which the Industrial Design Office is closed to the public are prescribed under section 36 of the Regulations. The Minister may also, on account of unforeseen circumstances and if he or she is satisfied that it is in the public’s interest, designate a day on which the deadlines will be extended. See section 1.07 of this Manual for the practice applicable in relation to extension of deadlines.
As it is the case for applications, section 24.1 for the Act is a new section that applies to all registered designs, including designs registered prior to the coming into force of the Act. This section ensures that any document, information or fee may be provided in electronic form and by electronic means. See section 1.05 of this Manual for practices applicable in relation to electronic communications.
In accordance with section 33 of the Act, the Regulations in force as of November 5, 2018, apply to all applications with a filing date before the coming into force of the Act and all designs registered on the basis of such applications, unless the Regulations provide otherwise.
Section 10 of the Regulations, which stipulate that the Industrial Design Office must not have regard to any part of a document submitted in a language other than English or French, does not apply. Rather, section 13 of the former Regulations, which remain applicable, states that the Industrial Design Office shall refuse any document that is not in English or French, unless a translation is provided. Section 13 also specifies that the text of an application shall be wholly in English or wholly in French.
Section 11 of the Regulations stipulates that the Industrial Design Office will acknowledge receipt of a communication with the stated or apparent intent of protesting the registration of a design, but will give no information as to the action taken. This section also provides that, in accordance with section 8.3 of the Act and section 32 of the Regulations, an application and all its related documents are to be made available to the public. In that case, should there be any protest on file; it will be made available to the public. Since section 8.3 of the Act does not apply to applications filed before the coming into force, section 11 of the Regulations cannot apply. Rather, it is replaced by subsection 8(2) of the former Regulations. The former provision is essentially the same; however applications filed before the coming into force are not to be made available to the public until registration.
The following sections of the Regulations do not apply to applications filed before the coming into force:
Rather, the requirements of section 9(1), 9(2)(a) to (d), 9.1, 10 and 12 of the former Regulations remain applicable.
Sections 9(1) and (2) of the former Regulations state that an application must be made in the prescribed form, include the name and address of the applicant, the name and address of the agent (if one is appointed), a title, a description, a drawing or photographs. Paragraph 9(2)(e) does not apply as a representative for service is no longer required for any applications filed before or after the coming into force of the Act.
Section 9.1 of the former Regulations provides information on the manner of presenting drawings or photographs, the manner of showing the designs and disclaiming parts of it. The applicant may also provide one view on a drawing that includes environment (meaning subject matter that is not part of the finished article and that is illustrated only for the purpose of showing the article in context) provided that the application contains more than one view and all other views show the article in isolation, that the environment is shown in well-defined stippled lines and that the inclusion of the environment in the application helps to provide a better understanding of what are the features of the design and what is the finished article to which the design is applied. It must be clear from the combination of the drawings, the description and the title what is the environment, what are the features of the design and to which finished article the design is applied.
Section 10 of the former Regulations requires that the application must relate to one design applied to a single finished article or set or to variants applied to a single finished article or set. If after examination it is considered that the application relates to more than one design, the applicant will be advised that the application must be limited to only one of the designs disclosed. The Industrial Design Office will also advise the applicant that a separate application (commonly called a "divisional") may be filed for any of the other design(s). Note that the filing fee is required for each divisional filed. A divisional must be filed before the registration of the design in the original application (commonly called the "parent"). It is the responsibility of the applicant to notify the Industrial Design Office when an application is being filed as a divisional of another application. A divisional application will have the same filing date as the parent application and the Industrial Design Office may register the parent (filed before the coming into force of the Act) and divisional(s) on the same date.
Section 12 of the former Regulations provides information on how to present documents and any other materials to the Industrial Design Office. The application must be clear and legible. If filed in paper form, the application must only be printed on one side on white paper that measures between 20 cm and 22 cm (7.9 in and 8.5 in) in width and between 25 cm and 36 cm (9.8 in and 14 in) in length.
Section 21 of the Regulations, which outlines the filing date requirements, will not apply and rather the filing requirements found in section 11 of the former Regulations will continue to apply. As the application is filed before the coming into force of the Act, it will establish a filing date in accordance with section 11 of the former Regulations.
To obtain a filing date under the former Regulations, the applicant must have submitted to the Industrial Design Office prior to the coming into force their name and address, the name and address of the agent if one is appointed, a title identifying the finished article, a description identifying the features that constitute the design and drawings or photographs.
Subsection 22(1) of the Regulations, which specifies that the Industrial Design Office must examine an application to determine if the design is registrable under section 7 of the Act, does not apply to applications filed before the coming into force of the Act. Rather, an application filed prior to the coming into force of the Act will be examined in accordance with section 5 of the Act and section 6 and subsection 7(3) of the former Act. Section 7(3) has been interpreted to mean that a design must be original in order to be entitled to registration.
[26]
For guiding principles in relation to originality, see Annex A of the previous Industrial Design Office Practice Guide. Section 6 of the former Act specifies that a design will not be registered if:
In accordance with section 32 of the Regulations, applications are made available to the public either at registration or 30 months from the filing date or earliest priority date, if any. Section 24 of the Regulations sets out an outer time limit for delay of registration which is harmonized with the prescribed date for making an application available to the public set out in section 32 of the Regulations. Section 32 of the Regulations does not apply to applications filed before the coming into force of the Act; consequently, section 24 of the Regulations does not apply.
Applications filed before the coming into force of the Act may benefit from one or more six-month delay of registration from the time the application is allowed.
Other associated applications may also benefit from this delay of registration when applicants request that related designs be registered on the same day or if they have submitted original and divisional applications, so that they all register on the same day. Consequently, when a delay of registration is requested for a particular application that is associated with other applications, those other applications may also be delayed as a result.
For example, if a delay of registration is requested on application “A” which is associated with other applications, application A will hold back from registration all associated applications until the delay of registration expires. At that time, all associated applications will proceed to registration on the same day if they are all in an allowable state. Please note that if an application that has been delayed from registering is disassociated from a group of applications, only the application to which the delay was applied will be held back from registration. The others will proceed to registration if they are in an allowable state.
However, note that applications filed after the coming into force of the Act may not be associated to request registration on the same day. As such, it is recommended to request a delay of registration on each application individually.
Section 25 of the Regulations states that an application may be amended at any time before registration and includes a list of limitations to amendments; this section does not apply to applications filed before the coming into force of the Act. Rather, section 16 of the former Regulations applies, which states essentially the same requirements, but includes fewer limitations on amendments.
In accordance with subsection 16(1) and (2) of the former Regulations, an application may be amended any time before registration. However, it is unacceptable to amend the application in a way that would substantially alter the design to which the application relates. In particular, changes to the title, the description or drawings that describe or disclose a substantially different design are unacceptable.
The following sections do not apply to applications filed before the coming into force of the Act:
Section 30, which identifies that an international application is equivalent to a regular filing of an application for the purposes of making a request for priority.
Rather, section 29 of the former Act and section 20 of the former Regulations apply.
In accordance with section 29 of the former Act, in order for an applicant to make a request for priority based on an earlier filed application in or for a foreign country, the foreign application must be the application for the registration of the same industrial design, and the request must be filed with the Industrial Design Office within a period of six months from the date of filing of the foreign application.
Subsection 20(1) of the former Regulations requires that a request for priority be made in writing and include:
The Industrial Design Office considers that in order for an applicant to make a claim for priority based on an earlier filed application, both the request for priority and all of the priority information required by subsection 20(1) of the former Regulations must be filed within a period of six months from the date of filing of the foreign application. Therefore, if any or all of the required priority information as listed above is not provided, it cannot be rectified by the Industrial Design Office after the expiry of the six-month period specified in subsection 29(1) of the former Act.
In accordance with subsection 20(2) of the former Regulations, if entitlement to registration is disputed because the application is made for a design that is identical to, or closely resembles the design so as to be confounded with it, the Industrial Design Office will request from the applicant that claims an earlier priority date a certified copy of the foreign application accompanied by a certificate from the foreign office showing the date of filing in that country. Until these documents are submitted to the Industrial Design Office, the priority request is suspended. If the certified copy shows that the foreign application relates to a different design than that of the Canadian application, the priority claim will not apply to the Canadian application.
Section 31 of the Regulations provides an exclusion from relevant prior art for a design in an applicant’s earlier filed application that does not differ substantially from a design in the same applicant’s later filed application. Registration of the later filed design would generally be blocked by the earlier one for lack of novelty. If however, the filing date of the later filed application is no later than 12 months after the filing date of earlier filed application, that application will be excluded from the relevant prior art.
This section does not apply to applications filed before the coming into force of the Act, as they are not assessed for novelty under section 8.2 of the Act but rather they are assessed for originality under section 6 and subsection 7(3) of the former Act. See section 16 of this Manual for more information on the novelty assessment.
If a design in an applicant’s application that is filed before the coming into force of the Act does not differ substantially from a design in the same applicant’s application that is filed after coming into force of the Act and that the later filed application registers before the one filed prior to the coming into force of the Act, the exclusion from prior art provided for by section 31 of the Regulations will not apply. Consequently, the Industrial Design Office will send a report objecting to registration of the earlier filed application, resulting in self-collision. In order to reduce the risk of this situation arising, the Industrial Design Office recommends that the applicant request a delay of registration on the subsequently filed application. This should prevent self-collision issues by giving sufficient time for the first filed design in that application to proceed to registration.
Section 32 of the Regulations sets out the prescribed date on which an application and all its related documents are to be made available to the public. It also includes information pertaining to the impact of the withdrawal of an application and withdrawal of priority claim on the prescribed date on which an application is made available to the public. This section does not apply to applications filed before the coming into force of the Act. Rather, these applications will only be made available to the public only upon registration.
The maintenance of all registered designs will be dealt with in accordance with subsections 33(2) and (3) of the Regulations. To find out the exact amount required for the maintenance fee, please consult the list of fees available on CIPO’s website.
Subsection 33(1) of the Regulations, which outlines the prescribed maintenance period, does not apply. Rather, the maintenance period for applications filed before the coming into force of the Act is prescribed by paragraph 53(2)(b) of the Regulations. The prescribed period for which maintenance fees are to be paid begins five years after the date of registration of the design and ends 10 years after the date of registration of the design.
Last updated: June 14, 2024
| For the purpose of subsection 24.1(1) of the Act, the Commissioner of Patents specifies that any document, information or fee may be submitted through CIPO’s online services or by facsimile.
Correspondence in black and white may be sent by facsimile to the following numbers: (819) 953-CIPO (2476) or (819) 953-OPIC (6742). Correspondence in colour must be sent to the following number: (819) 934-3833. CIPO’s online services are available from the following web pages on CIPO’s website: Industrial Design E-Services application; Industrial Design General Correspondence application; and, Industrial Design Maintenance Fees application.
For the purposes of subsection 24.1(1) of the Act and section 4 of the Regulations, the Commissioner of Patents specifies that any document, information or fee may be submitted by physical delivery of an electronic medium directly to CIPO. The Industrial Design Office will accept the following types of electronic mediums: CD-ROM, CD-R, DVD, DVD-R, and USB stick.
The acceptable file formats for documents, other than a representation of a design, submitted electronically via CIPO’s website are WPD, DOC, DOCX and PDF. The acceptable file formats for the representation of a design are PDF, JPEG, PNG, TIFF and GIF. The file size limit is of 60MB for PDF, 10MB for the other file formats. The scanned/stored images should be of a resolution of at least 300 dpi and the dimensions must be of 21.59 cm by 27.94 cm (8.5 in by 11 in). Any representation of a design not meeting minimal requirements will be automatically converted.
|
| For the purpose of section 4 of the Regulations, the Commissioner of Patents specifies that any document, information or fee may be submitted by physical delivery to the Office at the following address:
Industrial Design Office
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A 0C9
For the purpose of section 4 of the Regulations, the Commissioner of Patents specifies that the Registered Mail™ and Xpresspost™ services of Canada Post are designated establishments through which any document, information or fee intended for the Minister or Commissioner of Patents may be submitted by physical delivery.
In all cases, all material must be addressed to the “Industrial Design Office” and enclosed in a sealed envelope.
|
| For the purpose of paragraph 9(b) of the Regulations, the Commissioner of Patents specifies that a document submitted to the Minister or Commissioner of Patents must be in the following form:
For a document submitted by physical delivery, it must be printed on one side of the page only (i.e. no double-sided printing), on white paper with the following dimensions: between 20 cm and 22 cm (7.9 in and 8.5 in) by 25 cm and 36 cm (9.8 in and 14 in). The page orientation may be portrait or landscape.
For a document submitted by electronic means, except for a representation of a design, the acceptable file formats for documents are WPD, DOC, DOCX and PDF. The acceptable file formats for a representation of a design are PDF, JPEG, PNG, TIFF and GIF. The file size limit is of 60MB for PDF, 10MB for the other file formats. The scanned/stored images should be of a resolution of at least 300 dpi and the dimensions must be of 21.59 cm by 27.94 cm (8.5 in by 11 in). Any representation of a design not meeting minimal requirements will be automatically converted. In the case of documents submitted by physical delivery of an electronic medium, the Industrial Design Office will accept the following types of mediums: CD-ROM, CD-R, DVD, DVD-R, and USB stick.
|
| For the purpose of subparagraph 14(b)(iii), the Commissioner of Patents specifies that no other visual reproductions are currently being accepted to represent a design. The representation of a design must be in the form of a photograph, a graphic reproduction, or a combination of both.
|
| For the purpose of section 15 of the Regulations, the Commissioner of Patents specifies that photographs or graphical reproductions must be presented in the following manner:
Reproductions and photographs must be numbered. When a design is represented by using multiple views, the numbering must consist of either:
Variants can either be numbered:
Graphical reproductions and photographs should be numbered consecutively, beginning with number 1. For photographs, it is suggested that the numbers be written, stamped or typed in permanent ink on the back of the photograph or in the margins. Graphical reproductions must have margins of at least 2.5 cm.
In addition to proper numbering, photographs or graphical reproductions contained in an application must be presented in the manner specified in section 8.05 of this Manual.
|
| For the purposes of paragraphs 27(1)(a) and 29(d) of the Regulations, the Commissioner of Patents specifies that the WIPO Digital Access Service (WIPO DAS) is an accepted digital library for making available a copy of a previously regularly filed application. For more information on WIPO DAS, please consult https://www.wipo.int/das/en/index.html.
|
Version history
| Version
|
Publication date
|
|
Version
|
Publication date
|
| 2018.11
|
November 2, 2018
|
|
August 16, 2021
|
|
| April 1, 2019
|
|
December 6, 2021
|
||
| August 28, 2019
|
|
August 1, 2022
|
||
| November 22, 2019
|
|
March 16, 2023
|
||
| January 23, 2020
|
|
August 1, 2023
|
||
| June 30, 2020
|
|
June 14, 2024
|
||
| April 1, 2021
|
|
August 07, 2024
|
||
| July 7, 2021
|
|
November 04, 2024
|
Change history
| 2019.04
|
|
| Publication date:
|
April 1, 2019
|
| Change(s)
|
|
| Addition of the maximum file size for the representation of a design.
|
|
| Addition of an indication that the signature of applicant is not required to revoke an agent.
|
|
| Creation of a new section on mergers.
|
|
| Creation of a new section on WIPO’s Digital Access Service – making an application available on the service.
|
|
| Creation of a new section on WIPO’s Digital Access Service – providing access to an application via the service.
|
|
| Indication that the request to withdraw a delay of registration must be a written request.
|
| 2019.08
|
|
| Publication date:
|
August 28, 2019
|
| Section(s)
|
Change(s)
|
| Creation of a new section on electronic mediums.
|
|
| Renumbering of previous section 1.04 (Electronic communications) to 1.05. Further, “Electronic communications” was renamed to “Electronic communications to the Office” and content was re-ordered and updated.
|
|
| Addition of a facsimile number for communications in colour and further clarification on the confidentiality of the transmission process.
|
|
| Link for ordering copies of documents moved to section 6.02.01.
|
|
| Creation of a new section on electronic communications from the Office which includes information on preferred method of receiving communications, CIPO’s E-Mailbox application and CIPO’s E-Access application for industrial designs.
|
|
| Renumbering of sections 1.05 to 1.09 in light of the addition of new sections.
|
|
| Additional information on how and when applicants can make a request to the Office to make their application available on WIPO DAS.
|
|
| Revised text to clarify that a translation is required along with a priority documents in a language other than English or French.
|
|
| Clarifications made to the wording of search based on priority to provide for different situations.
|
|
| Correction to the name of the classification standard and inclusion of additional details.
|
|
| Clarifications made to the wording of search based on priority to provide for different situations.
|
| 2019.11
|
|
| Publication date:
|
November 22, 2019
|
| Section(s)
|
Change(s)
|
| 3.02, 8.01, 8.03, 10.01, 11.01, 15.02, 19.02, 21.01, 33.02, 37.02.02, 37.02.09
|
Included the required amount for the fees indicated in those sections.
|
| Creation of a new section pertaining to the Service Fees Act and the annual adjustment of fees.
|
|
| Creation of a new section indicating the exact fee amount required for industrial design services.
|
|
| Renumbering of previous section 5.01 in light of the creation of new sections. Information added regarding the date used to determine the required amount of a fee.
|
|
| Renumbering of previous section 5.02 in light of the creation of new sections. Additional information added regarding refunds from the Industrial Design Office.
|
|
| Clarifications made to the wording of the colour section in order to account for a scenario whereby the Industrial Design Office would issue an objection.
|
|
| Added an indication that a statement of limitation is not required if all features of a design are claimed.
|
|
| Added an indication that a declaration under subsection 4(1) of the former Act is not required for applications filed on or after November 5, 2018. The Industrial Design Office will issue an objection should a statement or description include a declaration.
|
|
| Clarifications to the section on limitations on amendments in order to specify that the inclusion of a new photograph or reproduction is not considered to be an additional representation of a design.
|
| 2020.01
|
|
| Publication date:
|
January 23, 2020
|
| Section(s)
|
Change(s)
|
| Added information with respect to online services, including the new Industrial Design E‑Amendment functionality.
|
|
| Added clarifications regarding the effect given to the appointment of a representative in an international application.
|
| 2020.06
|
|
| Publication date:
|
June 30, 2020
|
| Section(s)
|
Change(s)
|
| Added information and hyperlink to CIPO’s list of registered Canadian patent and trademark agents.
|
|
| 5.01, 5.02, 8.01, 8.03, 10.01, 15.02, 19.02, 21.01, 33.02, 37.02.02, 37.02.09
|
Fee amounts updated in light of the annual adjustment prescribed by the Service Fees Act.
|
| Clarified the scope of the design shown in example 2 by expanding the statement.
|
|
| Added an indication that the Industrial Design Office will send a courtesy maintenance reminder letter.
|
| 2021.04
|
|
| Publication date:
|
April 1, 2021
|
| Section(s)
|
Change(s)
|
| Creation of a new section on the remissions prescribed by the Service Fees Act.
|
|
| Creation of a new section providing information on the pilot project put in place on March 29, 2021, in order to test proposed changes to the refusal and review process for industrial design decisions.
|
| 2021.07
|
|
| Publication date:
|
July 7, 2021
|
| Section(s)
|
Change(s)
|
| 5.01, 5.02, 8.01, 8.03, 10.01, 15.02, 19.02, 21.01, 33.02, 37.02.02, 37.02.09
|
Fee amounts updated in light of the annual adjustment prescribed by the Service Fees Act.
|
| 2021.08
|
|
| Publication date:
|
August 16, 2021
|
| Section(s)
|
Change(s)
|
| Changes to accommodate for the removal of regional offices as designated establishments.
|
|
| Revised text to remove the mention that CIPO maintains a list of registered Canadian patent and trademark agents.
|
|
| Added an indication that the online consultation has ended.
|
| 2021.12
|
|
| Publication date:
|
December 20, 2021
|
| Section(s)
|
Change(s)
|
| Added clarifications regarding the appointment of an agent before the Industrial Design Office with respect to international registrations.
|
|
| Revised text to align with CIPO’s refund practice and policies.
|
|
| Added an indication to the representation requirements section specifying that the representation of a design must not be in the form of a technical drawing.
|
|
| Removed the indication that environment should not be included in photographs. Added indication that the statement should clearly identify what constitute the environment.
|
|
| Clarifications added to the colour section in order to improve the accuracy and certainty of colour claims.
|
|
| Added an indication that requests for withdrawal of a registration will be acknowledged and put on file.
|
|
| Added an indication that the name of the finished article should be specific enough to ensure that the scope of the design is clear.
|
|
| Creation of a new section codifying existing practice whereby buildings or structures to be constructed on site are not considered to be articles to which a design may be applied.
|
|
| Added an indication that the Industrial Design Office will acknowledge the receipt of international registrations.
|
|
| Creation of a new section providing information on divisional applications resulting from a Hague application, which are considered to be national applications. Renumbering of existing sections 25.02 and 25.03 to 25.03 and 25.04 respectively.
|
|
| Creation of a new section indicating that a courtesy copy of the Notification of Refusal will be sent to the agent appointed before the Industrial Design Office, if one is appointed. Renumbering of existing section 26.01.01 to 26.01.02.
|
|
| Creation of a new section indicating that a courtesy copy of the Statement of Grant of Protection will be sent to the agent appointed before the Industrial Design Office, if one is appointed.
|
|
| Modified the section on the renewal of international registrations in respect of Canada to clarify how holders can ensure that the international registration remains maintained in respect of Canada.
|
|
| Modified the numbering scheme used to identify the different versions of the Manual in order to facilitate version control. The version number now represent the year and month of publication.
|
| 2022.08
|
|
| Publication date:
|
August 1, 2022
|
| Section(s)
|
Change(s)
|
| 1.06.02.02
|
|
| Added the National Day for Truth and Reconciliation (September 30) to the list of prescribed days.
|
|
| 5.01, 5.02, 8.01, 8.03, 10.01, 15.02, 19.02, 21.01, 33.02, 37.02.02, 37.02.09
|
Fee amounts updated in light of the annual adjustment prescribed by the Service Fees Act.
|
| Added hyperlinks to Services Standards and Remissions at CIPO webpages.
|
|
| Creation of new section 11.01.01. Deletion of section 19.03.01.
Information about the non-application of delay of registration to Hague applications previously found in section 19.03.01 was inserted in parent section 19.03 and moved to a new section 11.01.01, where information on the request for delay of registration resides.
|
|
| Footnotes
|
Fixed incorrect supra references in footnotes throughout the document.
|
| 2023.03
|
|
| Publication date:
|
March 16, 2023
|
| Section(s)
|
Change(s)
|
| Section restructured to divide information that relates to industrial design online services in three different subsections. Updated the name of the Industrial Design E-Filing and E-Amendment application to Industrial Design E-Services application. Added a list of requests that can be submitted to the Industrial Design Office using the Industrial Design E‑Services application.
|
|
| Consequential modification to reflect the change in the name of the Industrial Design E-Filing and E-Amendment application, now known as Industrial Design E-Services application.
|
|
| 1.05.01, 1.06.02.01, 1.06.02.02
|
Section 1.06.02.02 deleted. Removed information about the first time set-up for E‑Mailbox access. Information that was however still relevant has been moved to sections 1.05.01 and 1.06.02.01. Users wishing to set‑up an account or getting authorized must email Industrial Design Office IT Inquiries or contact CIPO’s Client Service Centre.
|
| New section clarifying that the Industrial Design Office will record a change in the name or address of an appointed agent upon request.
|
|
| New section clarifying that a change of name or address affecting a Hague application or registration must be made before the International Bureau of WIPO.
|
| 2023.08
|
|
| Publication date:
|
August 1, 2023
|
| Section(s)
|
Change(s)
|
| 3.02, 8.01, 8.03, 10.01, 11.01, 15.02, 19.02, 21.01, 33.02, 37.02.02, 37.02.09
|
The required amount for the fees indicated in those sections was removed and replaced by an hyperlink to the list of fees available on CIPO’s website.
|
| The list of fees has been removed from section 5.02 and replaced with high-level information pertaining to the annual adjustment of January 1, 2024. To find out the exact amount of a fee, please consult the list of fees available on CIPO’s website.
|
|
| Consequential amendments. Added a cross-reference to section 19.06 and updated a cross‑reference to section 28 due to renumbering of section 27 to 28.
|
|
| Modified the name of section 19.06 and added information on rectification and alteration.
Previous section 19.06.01 renumbered as 19.06.05
New sections 19.06.01 to 19.06.04 were added on who may be named as the defendant or respondent in an action or application, the personal service of a statement of claim or notice of application, the separate requirement to give notice to the Minister and on Federal Court judgments.
The “relevant provisions” section endnote has been modified accordingly.
|
|
| Section 27 renamed from “Appeal” to “Hague Registration” as it is substituted with content from previous section 28.
Renumbering of previous sections 28.01, 28.01.01, 28.02 to sections 27.01, 27.01.01 and 27.02 respectively.
|
|
| Section 28 renamed from “Hague Registration” to “Appeal” as it is substituted with content from previous section 27.
Renumbering of previous section 27.01 to 28.01, with some information on communication to the International Bureau being moved to new section 28.02.
New sections 28.01.01, 28.01.02 and 28.01.02.01 were added on who may be named as the respondent in an appeal and on the personal service of the notice of appeal.
The “relevant provisions” section endnote has been modified accordingly.
|
|
| Section restructured to divide information into three different sections. Creation of a new section 29.01.01 with information relating to Federal Court judgments. Some information on communication to the International Bureau moved from previous section 29.01 to a new section 29.02.
The “relevant provisions” section endnote has been modified accordingly.
|
| 2024.06
|
|
| Publication date:
|
June 14, 2024
|
| Section(s)
|
Change(s)
|
| Updated the list of requests that can be submitted to the Industrial Design Office using the Industrial Design E‑Services application.
|
|
| Modified the text to reflect the revised practice on designs applied to buildings or structures.
|
|
| Updated the list of acceptable file formats for the representation of a design to add the “PNG” format, which had been mistakenly omitted.
|
| 2024.08
|
|
| Publication date:
|
August 07, 2024
|
| Section(s)
|
Change(s)
|
| Revised text to reflect the formalization of a change in practice whereby an industrial design examination decision to refuse registration is reviewed by a subject-matter expert of the Industrial Design Office rather than by the Patent Appeal Board. Additional changes made to reflect a change in correspondence whereby the Notice of Possible Refusal has been replaced by a Final Examination Report, to which a lack of response would lead to abandonment rather than a refusal.
|
|
| 18.02.01
|
Section removed following the end of the pilot project that was put in place on March 29, 2021, to test the proposed changes to the refusal and review process for industrial design decisions.
|
| Changed the wording of the fourth bullet to clarify that reproductions and photographs should be numbered rather than must be numbered.
|
| 2024.11
|
|
| Publication date:
|
November 4, 2024
|
| Section(s)
|
Change(s)
|
| Revised text to remove indication that an applicant may provide a correspondence address that is different from the applicant’s address as this option is no longer available.
|
[1]
Industrial Design Act, RSC, 1985, c I-9.
[2]
Industrial Design Regulations, SOR/18-120.
[3]
In this Manual, the Hague Agreement means the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted in Geneva on July 2, 1999.
[4]
Gramophone Co v Magazine Holder Co (1910), 27 RPC 152, (1911) RPC 221 (UK CA).
[5]
Schmittzehe v Roberts [1959] RPC 347 (UK HCJCD).
[6]
Ibid, See also Cow (PB) & Co Ltd v Cannon Rubber Manufacturers Ltd [1959] RPC 347.
[7]
Milliken & Co v Interface Flooring Systems (Canada) Inc (1998), 3 FCR 103, 83 CPR (3d) 470 (FCTD), Milliken & Co v Interface Flooring Systems (Canada) Inc (2000), 5 CPR (4th) 209 at para. 18 (FCA).
[8]
Rothbury International Inc v Canada (Minister of Industry), [2005] 1 FCR 130 at para 31, 2004 FC 578 (FC) [Rothbury].
[9]
Amp Incorporated v Utilux Proprietary Ltd [1972] RPC 103 at 108 (HL)[Amp Incorporated].
[10]
Ibid at p. 112.
[11]
Industrial Design Application 1998-2446, Re (2003), 25 CPR (4th) 256 (Can Pat App Bd & Pat Commr); Justice Stratas in Zero Spill Systems (Int’l) Inc v Heide, 2015 FCA 115 at paras 24-27.
[12]
Dover, Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910), 27 RPC 175 at 179 (ChD).
[13]
Bata Industries Ltd v Warrington Inc (1985), 5 CPR (3d) 339, 55 NR 291 (FC) [Bata] citing Lewis Falk Ltd v Jacobwitz (1944), 61 RPC 116 at 124 [Lewis]; Rollason's Design (1898), 15 RPC 447.
[14]
Bodum USA, Inc v Trudeau Corporation (1889) Inc, 2012 FC 1128 at para 96, 105 CPR (4th) 88 [Bodum].
[15]
Clatworthy & Son Ltd v Dale Display Fixtures Ltd, [1929] SCR 429 at 431, [1929] 3 DLR 11 (SCC) [Clatworthy].
[16]
Hugh Laddie, Peter Prescott & Mary Vitoria, The Modern Law of Copyright and Designs, 2nd ed (London, Dublin, Edinburgh: Butterworths, 1995) at p 1129.
[17]
Bata, supra note 15 at para 23.
[18]
Rothbury, supra note 10 at paras 30-31.
[19]
Jones v Teichman, [1930] Ex CR 103 at 105, [1930] 3 DLR 437.
[20]
Dunlop Rubber Co v Golf Ball Developments Ltd (1931), 48 RPC 268 at 281(ChD); Re: Paramount Pictures Corporation Industrial Design Application (1981), 73 CPR (2d) 273 (Can Pat App Bd & Pat Commr).
[21]
Lewis, supra note 15.
[22]
Bodum, supra note 16 at para 98, citing Le May v Welch (1884) 28 Ch D 24 at 34-35, 33 WR 33 (CA).
[23]
Rothbury, supra note 10 at para 38.
[24]
Amp Incorporated, supra note 11.
[25]
Clatworthy, supra note 17 at 433-434.
[26]
AFX Licensing Corporation v HJC America, Inc, 2016 FC 435 at paras 107-111.
