Industrial Design Act
(R.S.C., 1985, c. I-9)
(as amended up to November 5, 2018)
An Act respecting industrial designs
Short Title
Short title
1 This Act may be cited as the Industrial Design Act.
R.S., c. I-8, s. 1.
Interpretation
Definitions
2 In this Act,
article means any thing that is made by hand, tool or machine; (objet)
Convention means the Convention of the Union of Paris made on March 20,
1883, including any amendments and revisions made from time to time to
which Canada is a party; (Convention)
country of the Union means(a) a country that is a member of the Union for the Protection of Industrial
Property constituted under the Convention, or
(b) a member of the World Trade Organization as defined in subsection 2(1)
of the World Trade Organization Agreement Implementation Act; (pays de
l’Union)
design or industrial design means 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; (dessin)
kit means a complete or substantially complete number of parts that can be
assembled to construct a finished article; (prêt-à-monter)
Minister means such member of the Queen’s Privy Council for Canada as is
designated by the Governor in Council as the Minister for the purposes of this
Act; (ministre)
prescribed means prescribed by the regulations and, in relation to fees, includes
determined in the manner prescribed by the regulations; (Version anglaise
seulement)
set means 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 thereof are applied; (ensemble)
useful article means an article that has a utilitarian function and includes a
model of any such article; (objet utilitaire)
utilitarian function, in respect of an article, means a function other than merely
serving as a substrate or carrier for artistic or literary matter; (fonction utilitaire)
variants means designs applied to the same article or set and not differing
substantially from one another. (variantes)
R.S., 1985, c. I-9, s. 2; R.S., 1985, c. 10 (4th Supp.), s. 20; 1993, c. 15, s. 12(E), c. 44, s. 161;
2014, c. 39, s. 102.
PART I
Industrial Designs
Registration
Register
3 (1) The Minister shall cause to be kept a register called the Register of
Industrial Designs, which shall contain the prescribed information and statements
in respect of designs that are registered under this Act.
Evidence
(2) The Register of Industrial Designs is evidence of its contents, and a copy of
an entry in the Register is evidence of the particulars of the entry if the copy is
certified as a true copy by the Minister, by the Commissioner of Patents or by an
officer, clerk or employee of the Commissioner’s office.
Admissibility
(3) A copy appearing to have been certified under subsection (2) is admissible in
evidence in any court.
R.S., 1985, c. I-9, s. 3; 1992, c. 1, s. 79; 2014, c. 39, s. 103.
Obvious error
3.1 The Minister may, within six months after an entry is made in the Register of
Industrial Designs, correct any error in the entry that is obvious from the
documents relating to the registered design in question that are, at the time that
the entry is made, in the Minister’s possession.
2015, c. 36, s. 44.
Application to register design
4 (1) The proprietor of a design, whether the first proprietor or a subsequent
proprietor, may apply to register the design by paying the prescribed fees and
filing with the Minister an application that contains
(a) the name of the finished article in respect of which the design is to be
registered;
(b) a representation of the design that complies with any prescribed
requirements; and
(c) any prescribed information or statement.
Substituted applicants
(2) The application shall, subject to any prescribed terms and conditions, be
considered to have been filed by a person other than the person who filed it if,
before the design is registered, it is established to the satisfaction of the Minister
that the other person was the proprietor when the application was filed.
Filing date
(3) The filing date of an application in Canada is the date on which the Minister
receives the prescribed documents, information and statements or, if they are
received on different dates, the latest of those dates.
R.S., 1985, c. I-9, s. 4; 1992, c. 1, s. 79; 1993, c. 15, s. 13; 2014, c. 39, s. 104.
Examination of application for registration
5 The Minister shall examine, in accordance with the regulations, each application
for the registration of a design.
R.S., 1985, c. I-9, s. 5; 1992, c. 1, s. 143(E); 1993, c. 15, s. 13; 2014, c. 39, s. 105.
5.1 [Repealed, 2014, c. 39, s. 105]
Refusal of application
6 (1) The Minister shall refuse an application for the registration of a design and
notify the applicant of the refusal if the Minister is satisfied that the design is not
registrable.
Registration of design
(2) If the Minister is not so satisfied, the Minister shall register the design and
notify the applicant of the registration.
R.S., 1985, c. I-9, s. 6; 1992, c. 1, s. 80; 1993, c. 15, s. 14, c. 44, s. 162; 2014, c. 39, s. 105.
Registrable design
7 A design is registrable if
(a) the application is filed in accordance with this Act;
(b) the design is novel, within the meaning of section 8.2;
(c) the design was created by the applicant or the applicant’s predecessor in
title;
(d) the design does not consist only of features that are dictated solely by a
utilitarian function of the finished article; and
(e) the design is not contrary to public morality or order.
R.S., 1985, c. I-9, s. 7; 1992, c. 1, ss. 81, 143(E); 1993, c. 15, s. 15; 2014, c. 39, s. 105.
Priority date
8 (1) The priority date of a design in an application for the registration of a design
(in this section and section 8.1 referred to as the “pending application”) is the
filing date of the application, unless
(a) the pending application is filed by a person
(i) who, on the filing date of the pending application, is a citizen or national
of, or is domiciled in, a country of the Union or has a real and effective
industrial or commercial establishment in a country of the Union, and
(ii) who has, or whose predecessor in title has, previously regularly filed an
application for the registration of a design disclosing the same design in or
for a country of the Union;
(b) the filing date of the pending application is within six months after the filing
date of the previously regularly filed application; and
(c) the applicant has made a request for priority in respect of the pending
application on the basis of the previously regularly filed application.
Filing date of previously regularly filed application
(2) In the circumstances set out in paragraphs (1)(a) to (c), the priority date of the
design is the filing date of the previously regularly filed application.
R.S., 1985, c. I-9, s. 8; 1993, c. 15, s. 16; 2014, c. 39, s. 105.
Request for priority
8.1 (1) For the purposes of section 8, an applicant for the registration of a design
may submit to the Minister a request for priority in respect of the pending
application on the basis of one or more previously regularly filed applications.
Requirements
(2) The request for priority shall be made in accordance with the regulations, and
the applicant shall submit to the Minister the filing date, the name of the country
or office of filing and the number of each previously regularly filed application on
which that request is based.
Request deemed never filed
(3) A request for priority is deemed never to have been filed if the request is not
made in accordance with the regulations or if the applicant does not submit the
information, other than the number of each previously regularly filed application,
that is required under subsection (2).
Withdrawal of request
(4) An applicant may, in accordance with the regulations, withdraw a request for
priority, either entirely or with respect to one or more previously regularly filed
applications.
Multiple previously regularly filed applications
(5) If more than one application has been previously regularly filed either in or for
the same country or in or for different countries,
(a) paragraph 8(1)(b) shall be applied using the earliest filing date of the
previously regularly filed applications; and
(b) subsection 8(2) shall be applied using the earliest filing date of the
previously regularly filed applications on which the request for priority is
based.
Previously regularly filed application deemed never filed
(6) For the purposes of section 8, a previously regularly filed application shall be
deemed never to have been filed if
(a) on the filing date of the pending application, more than six months have
elapsed since the filing date of the previously regularly filed application;
(b) before the filing date of the pending application, another application for the
registration of a design, disclosing the design in the pending application
applied to the same finished article,
(i) is filed by the person who filed the previously regularly filed application
or by that person’s successor in title or predecessor in title, and
(ii) is filed in or for the country where the previously regularly filed
application was filed; and
(c) on the filing date of the other application referred to in paragraph (b) or, if
there is more than one such other application, on the earliest of their filing
dates, the previously regularly filed application
(i) has been withdrawn, abandoned or refused without having been made
available to the public and without leaving any rights outstanding, and
(ii) has not served as a basis for a request for priority in any country,
including Canada.
2014, c. 39, s. 105.
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).
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.
2014, c. 39, s. 105.
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.
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.
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.
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.
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.
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).
2014, c. 39, s. 105; 2017, c. 26, s. 60(E).
Exclusive Right
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.
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.
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.
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.
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.
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.
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.
Proprietorship
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.
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.
Transfers
Design transferable
13 (1) Every design, whether registered or unregistered, is transferable in whole
or in part.
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.
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.
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.
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.
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.
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
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.
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.
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.
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]
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.
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.
Proprietor
(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.
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.
R.S., 1985, c. I-9, s. 18; 1993, c. 44, s. 169.
PART II
General 19 [Repealed, 2001, c. 34, s. 52]
20 [Repealed, 2015, c. 36, s. 45]
Extension of Time
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.
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
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.
Costs
(2) In either case, the Federal Court may make such order with respect to the
costs of the proceedings as the Court thinks fit.
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.
Jurisdiction
(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.
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.
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.
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
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.
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.
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.
Regulations
Regulations
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).
26 to 28 [Repealed, 1993, c. 15, s. 23]
Transitional Provisions
Definition of coming-into-force date
29 In sections 30 to 32, coming-into-force date means the day on which
subsection 104(2) of the Economic Action Plan 2014 Act, No. 2 comes into force.
R.S., 1985, c. I-9, s. 29; 1993, c. 44, s. 171; 1994, c. 47, s. 118; 2014, c. 39, s. 112.
29.1 [Repealed, 2014, c. 39, s. 112]
Prior applications — filing date
30 An application for the registration of a design whose filing date, determined
under this Act as it read immediately before the coming-into-force date, is before
the coming-into-force date, shall be dealt with and disposed of in accordance with
(a) the provisions of this Act, as they read immediately before the coming-into-
force date, other than sections 5, 13 and 20; and
(b) sections 5, 13, 21 and 24.1.
1993, c. 15, s. 24; 2014, c. 39, s. 112; 2015, c. 36, s. 48.
Prior application — no filing date
31 An application for the registration of a design that is filed before the coming-
into-force date and that does not, on that date, have a filing date, determined
under this Act as it read immediately before the coming-into-force date, shall be
deemed never to have been filed.
2014, c. 39, s. 112.
Registered designs
32 Any matter arising on or after the coming-into-force date, in respect of a
design registered before that date or a design registered on or after that date on
the basis of an application whose filing date, determined under this Act as it read
immediately before the coming-into-force date, is before the coming-into-force
date, shall be dealt with and disposed of in accordance with
(a) the provisions of this Act, as they read immediately before the coming-into-
force date, other than sections 3, 13 and 20; and
(b) sections 3, 3.1, 13, 21 and 24.1.
2014, c. 39, s. 112; 2015, c. 36, s. 49.
Regulations
33 For greater certainty, a regulation made under section 25 applies to an
application referred to in section 30 and to a design referred to in section 32,
unless the regulation provides otherwise.
2014, c. 39, s. 112.