PART IIndustrial Designs (continued)
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.
- R.S., 1985, c. I-9, s. 9
- 2014, c. 39, s. 105
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.
- R.S., 1985, c. I-9, s. 10
- 1993, c. 15, s. 17, c. 44, s. 163
- 2014, c. 39, s. 106
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.
- R.S., 1985, c. I-9, s. 11
- 1993, c. 44, s. 164
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.
- 2014, c. 39, s. 107
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.
- R.S., 1985, c. I-9, s. 12
- 1993, c. 15, s. 18
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.
(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.
- R.S., 1985, c. I-9, s. 13
- 1993, c. 15, s. 19
- 2014, c. 39, s. 108
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.
- R.S., 1985, c. I-9, s. 15
- 1993, c. 44, s. 166
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.
- 1993, c. 44, s. 166
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.
- 1993, c. 44, s. 166
16 [Repealed, 1993, c. 44, s. 167]
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.
(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.
(3) For the purposes of subsection (2), the proprietor is the proprietor at the time the articles, labels or packaging were marked.
- R.S., 1985, c. I-9, s. 17
- 1993, c. 15, s. 21, c. 44, s. 168
18 No remedy may be awarded for an act of infringement committed more than three years before the commencement of the action for infringement.
- R.S., 1985, c. I-9, s. 18
- 1993, c. 44, s. 169
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.
- R.S., 1985, c. I-9, s. 21
- 1993, c. 15, s. 22
- 2015, c. 36, s. 46
Procedure as to Rectification and Alteration
Marginal note:Federal Court may rectify entries
22 (1) The Federal Court may, on the information of the Attorney General or at the suit of any person aggrieved by any omission without sufficient cause to make any entry in the Register of Industrial Designs, or by any entry made without sufficient cause in the Register, make such order for making, expunging or varying any entry in the Register as the Court thinks fit, or the Court may refuse the application.
(2) In either case, the Federal Court may make such order with respect to the costs of the proceedings as the Court thinks fit.
Marginal note:Questions to be decided
(3) The Federal Court may in any proceedings under this section decide any question that may be necessary or expedient to decide for the rectification of the Register.
(4) The Federal Court has exclusive jurisdiction to hear and determine proceedings under this section.
- R.S., c. I-8, s. 22
- R.S., c. 10(2nd Supp.), s. 64
Marginal note:Application to alter design
23 (1) The registered proprietor of any registered industrial design may apply to the Federal Court for leave to add to or alter any industrial design in any particular not being an essential particular, and the Court may refuse or grant leave on such terms as it may think fit.
Marginal note:Notice to Minister
(2) Notice of any intended application to the Federal Court under this section for leave to add to or alter any industrial design shall be given to the Minister, and the Minister is entitled to be heard on the application.
- R.S., c. I-8, s. 23
- R.S., c. 10(2nd Supp.), s. 64
Marginal note:Consequent rectification of register
24 A certified copy of any order of the Federal Court for the making, expunging or varying of any entry in the Register of Industrial Designs, or for adding to or altering any registered industrial design, shall be transmitted to the Minister by an officer of the Registry of the Court, and the Register shall thereupon be rectified or altered in conformity with the order, or the purport of the order otherwise duly entered therein, as the case may be.
- R.S., c. I-8, s. 24
- R.S., c. 10(2nd Supp.), s. 65
Electronic Form and Means
Marginal note:Electronic form and means
24.1 (1) Subject to the regulations, any document, information or fee that is submitted to the Minister or the Commissioner of Patents under this Act may be submitted in any electronic form, and by any electronic means, that is specified by the Minister or the Commissioner of Patents.
Marginal note:Collection, storage, etc.
(2) Subject to the regulations, the Minister and the Commissioner of Patents may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information.
Marginal note:Definition of electronic
(3) In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means.
- 2014, c. 39, s. 110
25 The Governor in Council may make regulations
(a) governing titles of designs;
(b) respecting the form and contents of applications for the registration of designs, including
(i) the manner of naming finished articles,
(ii) the manner of identifying features of shape, configuration, pattern or ornament of all or part of a finished article, and
(iii) the manner of identifying that an application relates to only some of the features of shape, configuration, pattern or ornament that, in a finished article, appeal to and are judged solely by the eye, or to only some or all of those features of a part of a finished article;
(b.1) respecting the processing and examination of applications for the registration of designs, including the circumstances in which applications shall be deemed to be abandoned and the circumstances in which they shall be reinstated;
(b.2) respecting the circumstances in which paragraph 8.2(1)(c) does not apply in respect of a design that has been disclosed in an application for the registration of a design that was filed in Canada by a person referred to in subparagraph 8.2(1)(a)(i) or (ii);
(b.3) respecting the withdrawal of an application for the registration of a design and, for the purposes of subsections 8.3(4) and (5), prescribing the date, or the manner of determining the date, on or before which a request for priority or an application for the registration of a design shall be withdrawn;
(c) respecting the payment of fees and the amount of those fees;
(d) respecting the return of any fees paid under this Act;
(d.1) authorizing the Minister to waive, subject to any prescribed terms and conditions, the payment of a fee if the Minister is satisfied that the circumstances justify it;
(e) respecting the registration of sets and of variants of a design;
(e.1) respecting the correction of obvious errors in documents submitted to the Minister or the Commissioner of Patents, including
(i) the determination of what constitutes an obvious error, and
(ii) the effect of the correction;
(f) respecting requests for priority, including
(i) the period within which priority shall be requested,
(ii) the information and documentation that shall be submitted in support of requests for priority,
(iii) the period within which that information and documentation shall be submitted,
(iv) the withdrawal of requests for priority, and
(v) the correction of requests for priority or of information or documentation submitted in support of them and the effect of corrections on the application of section 8.3;
(g) respecting certificates of registration;
(g.1) respecting the recording of documents relating to a design;
(g.2) respecting the recording or registration of transfers of applications for the registration of designs or transfers of registered designs;
(g.3) respecting the provision, including in electronic form and by electronic means, of documents and information to the Minister or the Commissioner of Patents, including the time at which they are deemed to be received by the Minister or the Commissioner of Patents;
(g.4) respecting the use of electronic means for the purposes of subsection 24.1(2);
(g.5) respecting communications between the Minister or the Commissioner of Patents and any other person;
(g.6) for carrying into effect, despite anything in this Act, the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999, including any amendments and revisions made from time to time to which Canada is a party; and
(h) prescribing anything else that is to be prescribed under this Act and generally for carrying out the purposes and provisions of this Act.
- R.S., 1985, c. I-9, s. 25
- 1993, c. 15, s. 23, c. 44, s. 170
- 2014, c. 39, s. 111
- 2015, c. 36, s. 47
- 2017, c. 26, s. 61(E)
- Date modified: