Industrial Design Regulations (SOR/2018-120)

Interpretation

Marginal note:Definitions

1 The following definitions apply in these Regulations.

Act

Act means the Industrial Design Act. (Loi)

application

application means an application for the registration of a design. (Version anglaise seulement)

Commissioner

Commissioner means the Commissioner of Patents. (commissaire)

Common Regulations

Common Regulations means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, including any amendments made from time to time. (Règlement d’exécution commun)

date of registration

date of registration means, in relation to a design that is the subject of a Hague registration, the date of registration as determined under subsection 44(4). (date d’enregistrement)

divisional application

divisional application means an application filed in accordance with subsection 20(2). (demande divisionnaire)

Hague Agreement

Hague Agreement means the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999, including any amendments and revisions made from time to time to which Canada is a party. (Arrangement)

Hague application

Hague application means an application referred to in subsection 41(1). (demande visée par l’Arrangement)

Hague registration

Hague registration means a registration referred to in subsection 44(3). (enregistrement visé par l’Arrangement)

holder

holder means the person in whose name an international registration is recorded in the International Register. (titulaire)

International Bureau

International Bureau means the International Bureau of the World Intellectual Property Organization. (Bureau international)

International Designs Bulletin

International Designs Bulletin means the periodical bulletin in which the International Bureau effects the publications provided for in the Hague Agreement or the Common Regulations. (Bulletin des dessins et modèles internationaux)

International Register

International Register means the official collection of data concerning international registrations maintained by the International Bureau. (Registre international)

international registration

international registration means the international registration of a design effected according to the Hague Agreement. (enregistrement international)

international registration designating Canada

international registration designating Canada means an international registration resulting from an international application that contains an indication under Article 5(1)(v) of the Hague Agreement that Canada is a designated Contracting Party. (enregistrement international désignant le Canada)

Office

Office means the Canadian Intellectual Property Office. (Office)

PART 1Rules of General Application

Communications

Marginal note:Written communications

2 Written communications that are intended for the Minister or Commissioner must be addressed to the “Industrial Design Office”.

Marginal note:Communications not submitted in writing

3 Neither the Minister nor the Commissioner is required to have regard to communications that are not submitted in writing.

Marginal note:Submission of documents, information or fees

4 Unless submitted by electronic means under subsection 24.1(1) of the Act, any document, information or fee that is submitted to the Minister or Commissioner must be submitted by physical delivery to the Office or to an establishment that is designated by the Minister or Commissioner as being accepted for that purpose.

Marginal note:Deemed receipt — Office

• 5 (1) Documents, information or fees that are submitted by physical delivery to the Office are deemed to have been received by the Minister or Commissioner

  • (a) if they are delivered when the Office is open to the public, on the day on which they are delivered to the Office; and

  • (b) if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.

• Marginal note:Deemed receipt — designated establishment

  (2) Documents, information or fees that are submitted by physical delivery to a designated establishment are deemed to have been received by the Minister or Commissioner

  • (a) if they are delivered when the establishment is open to the public,

    • (i) in the case where the Office is open to the public for all or part of the day on which they are delivered, on that day, and

    • (ii) in any other case, on the first day on which the Office is next open to the public; and

  • (b) if they are delivered when the establishment is closed to the public, on the first day on which the Office is next open to the public that falls on or after the day on which the establishment is next open to the public.

• Marginal note:Deemed receipt — electronic means

  (3) Documents, information or fees that are submitted by electronic means under subsection 24.1(1) of the Act are deemed to have been received on the day on which the Office receives them, according to the local time of the place where the Office is located.

Marginal note:Electronic communications

6 If the Minister or Commissioner makes a communication available by a particular electronic means to a person who has consented to receiving communications by that means, the communication is deemed to have been sent to that person.

Marginal note:Postal address

7 A person doing business before the Office must provide the Minister with their postal address.

Marginal note:Written communications in respect of application

• 8 (1) Written communications submitted to the Minister or Commissioner in respect of an application must contain the name of the applicant and, if known, the application number.

• Marginal note:Written communications in respect of registered design

  (2) Written communications submitted to the Minister or Commissioner in respect of a registered design must contain the name of the registered proprietor and the registration number.

Marginal note:Manner of presentation of documents

9 Documents submitted to the Minister or Commissioner must be

• (a) clear and legible and permit direct reproduction; and

• (b) in a form that is specified by the Minister or Commissioner as being accepted for that purpose.

Marginal note:Material not in English or French

10 The Minister and Commissioner must not have regard to any part of a document submitted in a language other than English or French, except for a representation of a design filed under paragraph 4(1)(b) of the Act or a document referred to in paragraph 27(1)(a).

Marginal note:Acknowledgment of protest

11 Communications received by the Minister before the registration of a design with the stated or apparent intention of protesting against the registration of that design must be acknowledged but, subject to section 8.3 of the Act, information must not be given as to the action taken.

Representation Before the Office

Marginal note:Power to appoint agent

• 12 (1) A person may appoint an agent to represent them in business before the Office.

• Marginal note:Effect of act by agent

  (2) An act by or in relation to an agent in respect of business before the Office has the effect of an act by or in relation to the person who appointed the agent.

• Marginal note:Business before Office

  (3) Subject to subsection (4), in business before the Office for the purpose of prosecuting an application,

  • (a) if an agent is appointed by a person, the person must be represented by that agent; or

  • (b) if a person has not appointed an agent, the person must represent themselves.

• Marginal note:Exception

  (4) A person may represent themselves or be represented by any person authorized by them for the purpose of filing an application, paying a fee, giving notice under subsection (5) or making a request or providing evidence under section 13 of the Act.

• Marginal note:Effective date

  (5) The appointment of an agent or the revocation of such an appointment is effective starting on the day on which the Minister receives notice of the appointment or revocation.

• Marginal note:Postal address

  (6) In the case of an appointment, the notice must contain the postal address of the agent.

Register

Marginal note:Prescribed information and statements

13 For the purpose of subsection 3(1) of the Act, the prescribed information and statements that must be contained in the Register of Industrial Designs are

• (a) the date of registration;

• (b) the filing date of the application;

• (c) particulars of any request for priority submitted under section 8.1 of the Act;

• (d) the registration number;

• (e) the name and address of the registered proprietor of the design on the date of registration;

• (f) particulars of any change in the name or address of a registered proprietor recorded under section 35;

• (g) particulars of any transfer that is registered under section 13 of the Act that relates to a registered design;

• (h) the date prescribed under subsection 8.3(1) of the Act;

• (i) the name of the finished article in respect of which the design is registered;

• (j) the representation of the design contained in the application on the date of registration;

• (k) if the application contains a statement under section 17 or 18, that statement;

• (l) particulars of the payment of maintenance fees; and

• (m) particulars of any correction made under section 3.1 of the Act.

Applications

Marginal note:Requirements for representation of design

14 The prescribed requirements for the purpose of paragraph 4(1)(b) of the Act are that a representation of the design must

• (a) be sufficient to disclose the design fully, taking into account the name of the finished article and any statement under section 17 or 18;

• (b) be in the form of one or more of the following:

  • (i) photographs,

  • (ii) graphic reproductions, or

  • (iii) any other visual reproduction specified by the Minister or Commissioner as being accepted for that purpose;

• (c) be of sufficient quality to permit the features of the design to be identified clearly and accurately; and

• (d) include at least one photograph or reproduction that shows the design in isolation or the finished article in isolation.

Marginal note:Presentation of photographs or reproductions

15 Photographs or reproductions contained in an application must be presented in the manner specified by the Minister or Commissioner as being accepted for that purpose.

Marginal note:Name and postal address

16 For the purpose of paragraph 4(1)(c) of the Act, an application must contain the applicant’s name and postal address.

Marginal note:Features of shape, configuration, pattern and ornament

• 17 (1) Subject to subsections (2) to (4), an application is deemed to relate to all of the features of shape, configuration, pattern and ornament shown in the representation of the design that, in the finished article, appeal to and are judged solely by the eye.

• Marginal note:Exception — statement of limitation

  (2) If the application contains a statement clearly indicating that it relates only to some of the features of shape, configuration, pattern or ornament that, in the finished article, appeal to and are judged solely by the eye, or only to some or all of those features of a part of the finished article, then the application relates only to those features.

• Marginal note:Exception — features in dotted or broken lines

  (3) An application is deemed not to relate to a feature that is shown in the representation of the design in dotted or broken lines, unless the application contains a statement to the contrary.

• Marginal note:Exception — blurring or colouring

  (4) An application is deemed not to relate to a feature that is shown in the representation of the design by means of blurring or colouring if it is evident that the purpose of the blurring or colouring is to indicate that the application does not relate to that feature.

Marginal note:Optional description

18 An application may contain a brief statement describing the representation or the features of the design, but the statement must not describe a utilitarian function or a method or principle of manufacture or construction.

Marginal note:Hague applications

19 The contents of a Hague application on its filing date are deemed to comply with paragraphs 14(b) to (d) and sections 15, 16 and 18.

Marginal note:One design per application

• 20 (1) An application must be limited to one design applied to a single finished article or set or variants applied to a single finished article or set.

• Marginal note:Divisional applications

  (2) The applicant, in the case of a pending application (the “original application”), may file with the Minister a divisional application for the registration of a design applied to a finished article if that design applied to that finished article

  • (a) in respect of an original application that is not a divisional application, was disclosed in the original application on its filing date; and

  • (b) in respect of an original application that is a divisional application,

    • (i) was disclosed in the original application on the day on which the Minister received the original application, and

    • (ii) was disclosed, in the earliest original application in the series of applications from which the divisional application results, on the filing date of the earliest original application.

• Marginal note:Required statement

  (3) An application is a divisional application only if a statement to that effect that identifies the corresponding original application is contained in the application or in a separate document that is submitted to the Minister no later than three months after the day on which the Minister received the application.

• Marginal note:Separate application

  (4) A divisional application is a separate application, including with respect to the payment of any fees.

• Marginal note:Time period

  (5) A divisional application must not be filed later than two years after the filing date of the original application or, if the original application is itself a divisional application, two years after the filing date of the earliest original application in the series of applications from which the divisional application results.

• Marginal note:Exception

  (6) Subsection (5) does not apply to a divisional application for the registration of a design applied to a finished article if

  • (a) the Minister sends to the applicant, in the case of an original application, a report under subsection 22(2) setting out an objection to registration on the basis that the original application does not comply with subsection (1);

  • (b) on or after the date of the report under subsection 22(2), the applicant amends the original application so that it is no longer for the registration of that design applied to that finished article; and

  • (c) the divisional application is filed no later than six months after the day of the amendment.