Registered Design 142461
Registered Design 122904
Registered Design 137889
- Filing Your Application
In Canada, there is no time limit for registering an industrial design as long as the design has never been made available to the public (e.g., published or offered for commercial sale or use anywhere in the world). If the industrial design has been published, you must file for registration within 12 months of publication.
In order to claim priority from a previously filed application for the design in another country, the Canadian industrial design application must be filed within six months of the priority filing date. The request for priority must include the name of the country, the foreign application number, and the filing date of the foreign application.
The official filing fee for an industrial design application in Canada is CA $400 + $10 for each page of drawings in excess of 10 pages. The filing fee includes the cost of substantive examination.
When filing an industrial design application, the following information and documents must be provided:
- Name and address of the applicant
- If an agent is named, the name and address of the agent
- Title identifying the finished article
- Description that identifies the features that constitute the design
- A drawing or photograph in accordance with the formal requirements (see below)
- If the applicant has no place of business in Canada, the name and address of a representative for service
- 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
Section 9.1 of the Industrial Design Regulations lists the formal requirements for industrial design drawings in Canada. Careful attention should be paid to the preparation of the drawings. The most common reason for rejection of an application is due to unacceptable drawings. Additional guidelines and example drawings are available here.
The text of an industrial design application must be wholly in English or wholly in French. The Minister will refuse any document that is not in English or French, unless the applicant submits a translation of the document into one of those languages.
- Formalities Examination
If any of the required information or documents are missing at the time of filing, the application will not be accorded a filing date. The filing date will only be accorded once all of the document have been received.
Once the formal requirements are satisfied, a filing certificate will be issued which indicates the application number and the filing date. This typically occurs within 4 weeks of filing the application. A filing date can still be obtained without payment of the filing fee, but no further office action will take place until the fee is received.
- Substantive Examination
A separate request for substantive examination of the industrial design application is not required. The cost of examination is included in the filing fee.
A first office action is typically received within 8 months of issuance of the filing certificate and payment of the filing fee. A subsequent office action would typically be received within 6 weeks of filing a response to the first office action. It is possible to request accelerated examination with payment of an official fee of CA $500.
The deadline for responding to an office action is 4 months from the mailing date of the office action. Upon receipt of a written request from the applicant, the Industrial Design Office will generally grant one extension of time of 6 months to reply to an office action. If a response is not filed before the expiry of the time limit for filing the response, the application will be considered abandoned. It is possible to reinstate the application within 6 months from the date of abandonment by filing the response with a request for reinstatement and payment of an official fee of CA $200.
- Voluntary Amendments
An industrial design application may be amended at any time before the registration of the design. However, the application cannot be amended in a way that constitutes a substantial change to what has been identified as the design.
- Divisional Applications
An industrial design application must relate to one design or to variants of one design.
If the Examiner considers the application to relate to more than one design, the application must be limited to a single design. Any other design disclosed in the application may be made the subject of a separate (divisional) application, provided the divisional application is filed before the registration of the parent application.
A separate filing fee is required for each divisional application filed. The divisional application will be accorded the same filing date as the parent application and will be registered on the same date as the parent application.
If the the industrial design application is refused, a final office action will be issued. It is possible to request a review by the Patent Appeal Board. The Board will make recommendations to the Commissioner of Patents, who will either reverse the decision or support it in a final rejection. It is possible to appeal the final rejection to the Federal Court of Canada, and from there to the Supreme Court of Canada.
- Voluntary Withdrawal
An industrial design application may be voluntarily withdrawn by written request. The application will be made ‘inactive’ and no further office action will be taken. The applicant may re-apply if the design was not published more than one year prior to the second filing.
- Registration and Renewal
Once the Examiner has determined that the industrial design application is in an allowable state, it will be registered and a Certificate of Registration will be issued. It is possible to delay registration with payment of an official fee of CA $100.
Upon registration, the industrial design will be open for public inspection.
Registered industrial designs are valid for 10 years provided that the required renewal fee is paid.
If the owner wishes to maintain the protection beyond 5 years, an official fee of CA $350 must be submitted before the fifth anniversary of registration. If the fee is not received by this date, an additional fee of CA $50 will also be required, for a total of CA $400. If the fee of CA $400 is not paid by the deadline of 5 years + 6 months, design protection will end as of the next day.
Assuming timely payment of the renewal fee, design protection will end 10 years after the registration date and cannot be further extended.
- Marking and Enforcement
Once the industrial design is registered, it is recommended to mark the article (and/or its label or packaging) with a capital “D” inside a circle and the name (or usual abbreviation) of the design’s owner. This will eliminate a defence in infringement proceedings that the defence was not aware and had no reasonable grounds to suspect the design was registered, and therefore remedies other than an injunction will be available.
The owner of a design may take legal action against anyone that infringes the design in Canada. Examples of infringement include making, importing, selling or offering for sale any article in respect of which the design is registered and to which the design (or a similar design) has been applied. Possible remedies to infringement include injunction, recovery of damages or profits, punitive damages and disposal of any infringing article. No remedy will be awarded for an act of infringement committed more than 3 years prior to the commencement of legal action.