Industrial Design Act (R.S.C., 1985, c. I-9)

Marginal note:Novel design

• 8.2 (1) A design in an application for the registration of a design is novel if the same design, or a design not differing substantially from it, applied to a finished article that is the same as or analogous to the finished article in respect of which the design is to be registered,

  • (a) has not been disclosed, more than 12 months before the priority date of the design in the application, in such a manner that it became available to the public in Canada or elsewhere, by

    • (i) the person who filed the application,

    • (ii) that person’s predecessor in title, or

    • (iii) a person who obtained knowledge of the design in the application, directly or indirectly, from the person who filed the application or their predecessor in title;

  • (b) has not been disclosed by any other person, before the priority date referred to in paragraph (a), in such a manner that it became available to the public in Canada or elsewhere; and

  • (c) subject to the regulations, has not been disclosed in an application filed in Canada for the registration of a design whose priority date is before the priority date referred to in paragraph (a).

• Marginal note:Application deemed never filed

  (2) For the purposes of paragraph (1)(c), an application referred to in that paragraph is deemed never to have been filed if it is withdrawn before the earlier of the date on which it is made available to the public under section 8.3 and the date on which a design in it is registered.

Marginal note:Application and documents made available to public

• 8.3 (1) The Minister shall make available to the public, on the prescribed date, an application for the registration of a design and all documents in the Minister’s possession relating to the application and to the design’s registration.

• Marginal note:Non-disclosure

  (2) Except with the approval of the applicant or the registered proprietor, the Minister shall, before the prescribed date referred to in subsection (1), refuse to disclose the application for the registration of the design and any information or document relating to the application or to the design’s registration.

• Marginal note:Limitation

  (3) The prescribed date referred to in subsection (1) may not be later than the later of the date of registration of the design and 30 months after the filing date of the application for registration or, if a request for priority is made in respect of the application, the earliest filing date of a previously regularly filed application on which the request for priority is based.

• Marginal note:Withdrawal of request

  (4) If a request for priority is withdrawn on or before the prescribed date, it shall, for the purposes of subsection (3) and to the extent that it is withdrawn, be deemed never to have been made.

• Marginal note:Withdrawn applications

  (5) If an application for the registration of a design is withdrawn in accordance with the regulations on or before the prescribed date, the Minister shall not make the application and documents referred to in subsection (1) available to the public and shall refuse to disclose the application and documents, as well as any information relating to them.

• Marginal note:Prescribed date

  (6) A prescribed date referred to in subsection (4) or (5) is to be no later than the prescribed date referred to in subsection (1).

Exclusive Right

Marginal note:Exclusive right

9 The registration of a design, unless shown to be invalid, gives to the proprietor an exclusive right in relation to the design.

Marginal note:Duration of exclusive right

• 10 (1) Subject to subsection (3), the term limited for the duration of an exclusive right

  • (a) begins on the later of the date of registration of the design and the prescribed date, referred to in subsection 8.3(1), on which the application for the registration of the design is made available to the public; and

  • (b) ends on the later of the end of 10 years after the date of registration of the design and the end of 15 years after the filing date of the application.

• Marginal note:Maintenance fees

  (2) The proprietor of a design shall, to maintain the exclusive right accorded by the registration of the design, pay to the Commissioner of Patents such fees, in respect of such periods, as may be prescribed.

• Marginal note:Expiration of term

  (3) Where the fees payable under subsection (2) are not paid within the time provided for by the regulations, the term limited for the duration of the exclusive right shall be deemed to have expired at the end of that time.

Marginal note:Using design without licence

• 11 (1) During the existence of an exclusive right, no person shall, without the licence of the proprietor of the design,

  • (a) make, import for the purpose of trade or business, or sell, rent, or offer or expose for sale or rent, any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied; or

  • (b) do, in relation to a kit, anything specified in paragraph (a) that would constitute an infringement if done in relation to an article assembled from the kit.

• Marginal note:Substantial differences

  (2) For the purposes of subsection (1), in considering whether differences are substantial, the extent to which the registered design differs from any previously published design may be taken into account.

Marginal note:Restriction on protection

11.1 No protection afforded by this Act shall extend to features applied to a useful article that are dictated solely by a utilitarian function of the article or to any method or principle of manufacture or construction.

Proprietorship

Marginal note:First proprietor

• 12 (1) The author of a design is the first proprietor of the design, unless the author has executed the design for another person for a good and valuable consideration, in which case the other person is the first proprietor.

• Marginal note:Acquired right

  (2) The right of another person to the property shall only be co-extensive with the right that the other person has acquired.

Transfers

Marginal note:Design transferable

• 13 (1) Every design, whether registered or unregistered, is transferable in whole or in part.

• Marginal note:Recording of transfer of application

  (2) The Minister shall, subject to the regulations, record the transfer of an application for the registration of a design on the request of the applicant or, on receipt of evidence satisfactory to the Minister of the transfer, on the request of a transferee of the application.

• Marginal note:Registration of transfer of design

  (3) The Minister shall, subject to the regulations, register the transfer of any registered design on the request of the registered proprietor or, on receipt of evidence satisfactory to the Minister of the transfer, on the request of a transferee of the design.

• Marginal note:Transfer void

  (4) A transfer of a registered design that has not been registered is void against a subsequent transferee if the transfer to the subsequent transferee has been registered.

• Marginal note:Removal of recording or registration

  (5) The Minister shall remove the recording or registration of the transfer of an application for the registration of a design or the transfer of a registered design on receipt of evidence satisfactory to the Minister that the transfer should not have been recorded or registered.

• Marginal note:Limitation

  (6) The Minister is not authorized to remove the registration of a transfer of a registered design for the reason only that the transferor had previously transferred the registered design to another person.

14 [Repealed, 1993, c. 15, s. 20]

Action for Infringement

Marginal note:Action by proprietor or licensee

• 15 (1) An action for infringement of an exclusive right may be brought in any court of competent jurisdiction by the proprietor of the design or by an exclusive licensee of any right therein, subject to any agreement between the proprietor and the licensee.

• Marginal note:Proprietor to be a party

  (2) The proprietor of the design shall be or be made a party to any action for infringement of the exclusive right.

Marginal note:Power of court to grant relief

15.1 In any proceedings under section 15, the court may make such orders as the circumstances require, including orders for relief by way of injunction and the recovery of damages or profits, for punitive damages, and for the disposal of any infringing article or kit.

Marginal note:Concurrent jurisdiction

15.2 The Federal Court has concurrent jurisdiction to hear and determine

• (a) any action for the infringement of an exclusive right; and

• (b) any question relating to the proprietorship of a design or any right in a design.

16 [Repealed, 1993, c. 44, s. 167]

Marginal note:Defence

• 17 (1) In any proceedings under section 15, a court shall not award a remedy, other than an injunction, if the defendant establishes that, at the time of the act that is the subject of the proceedings, the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered.

• Marginal note:Exception

  (2) Subsection (1) does not apply if the plaintiff establishes that the capital letter "D" in a circle and the name, or the usual abbreviation of the name, of the proprietor of the design were marked on

  • (a) all, or substantially all, of the articles to which the registration pertains and that were distributed in Canada by or with the consent of the proprietor before the act complained of; or

  • (b) the labels or packaging associated with those articles.

• Marginal note:Proprietor

  (3) For the purposes of subsection (2), the proprietor is the proprietor at the time the articles, labels or packaging were marked.

Marginal note:Limitation

18 No remedy may be awarded for an act of infringement committed more than three years before the commencement of the action for infringement.

PART IIGeneral

19 [Repealed, 2001, c. 34, s. 52]

20 [Repealed, 2015, c. 36, s. 45]

Extension of Time

Marginal note:Time period extended

• 21 (1) If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Minister, that time period is extended to the next day that is not a prescribed day or a designated day.

• Marginal note:Power to designate day

  (2) The Minister may, on account of unforeseen circumstances and if the Minister is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Minister shall inform the public of that fact on the website of the Canadian Intellectual Property Office.