1 Relevant Authorities and Legislation
1.1 What is the relevant Design authority in your jurisdiction?
The relevant authority for granting industrial design registrations is the Canadian Intellectual Property Office (“CIPO”).
1.2 What is the relevant Design legislation in your jurisdiction?
The principal legislation relating to industrial designs in Canada is the Industrial Design Act.
In certain circumstances, protection may also be available under the Copyright Act and Trademarks Act.
Canada’s Copyright Act protects every original artistic work, including drawings, photographs, sculptures and works of artistic craftsmanship. However, the Copyright Act deems it not to be an infringement of copyright to copy designs applied to a useful article having a utilitarian function, if less than 50 copies are produced, unless those designs are: a graphic or photographic representation applied to the face of a product; a trademark or label; a material that has a woven or knitted pattern or that is suitable for piece goods or surface covering or for making wearing apparel; an architectural work that is a building or model of a building; a representation of a real or fictitious being, event or place applied to the product as its shape, configuration, pattern or ornament; or an article sold as a set (unless more than 50 sets are made).
The Trademarks Act provides for the registrability of two-dimensional designs, as well as three-dimensional shapes of goods, modes of packaging goods, positioning of signs, and textures that have acquired distinctiveness, so long as their features are not dictated primarily by a utilitarian function.
The answers in this chapter generally focus on the Industrial Design Act, though it is noted that a comprehensive approach to design protection should be considered from the outset, including whether trademark and copyright protection may be available, and related considerations.
2 Application for a Design
2.1 What can be registered as a Design?
Registered designs protect visual features that, in a finished article, appeal to and are judged solely by the eye. They are used to protect the appearance of, e.g., electronic devices, furnishing, vehicles, household goods, tools, medical devices, and electronic icons or animated designs applied to a display screen.
The visual features may be shape, configuration, pattern or ornament (including colour), or any combination of those features.
They may be applied to the entire article, or a portion of the article. Multiple variants of a design applied to the same article can be registered together, provided that they do not differ substantially from one another.
2.2 What cannot be registered as a Design?
A design cannot be registered if it consists only of features that are dictated solely by a utilitarian function of the finished article, or is contrary to public morality or order.
2.3 What information is needed to register a Design?
An application must contain: the name of the finished article in respect of which the design is to be registered; a representation of the design; information allowing the identity of the applicant to be established, such as the name of the applicant; information allowing the applicant to be contacted, such as the address of the applicant; and payment of an examination fee.
The application may include other information, such as a priority claim, and a statement indicating that the application relates to only some features. A description is optional.
2.4 What is the general procedure for Design registration?
After filing, an application is classified, searched, and examined substantively for compliance with the Industrial Design Act and Regulations.
If there are objections, then an examiner’s report is issued, indicating objections and inviting the applicant to amend or argue. Examination may proceed through more than one such exchange. If the objections are overcome or there were no objections, then the application is registered, unless a delay of registration was requested.
2.5 How is a Design adequately represented?
A design is adequately represented by one or more reproductions (drawings or photographs) that disclose the design fully, are of sufficient quality to permit the features of the design to be identified clearly and accurately, and include at least one view that shows the design or finished article in isolation.
2.6 Are Designs registered for specific goods or products?
Yes, designs are registered for the name of the finished article specified in the application.
2.7 Is there a “grace period” in your jurisdiction, and if so, how long is it?
Yes, Canada provides a grace period of one year from the date of the first applicant-derived public disclosure to the priority date (or filing date if none).
2.8 What territories (including dependents, colonies, etc.) are or can be covered by a Design in your jurisdiction?
A registration covers all the provinces and territories of Canada.
2.9 Who can own a Design in your jurisdiction?
The first or subsequent proprietor can own a design. The author of a design is the first proprietor of the design, unless the author has executed the design for another person, in which case the other person is the first proprietor. A design can be transferred to a subsequent proprietor. Chain-of-title documentation should be maintained to support ownership, in the event of litigation.
2.10 How long on average does registration take?
On average, registration takes 18 months from filing for a national application (11 months for a Hague application). Examination may be advanced, or registration delayed, upon request and payment of a fee.
2.11 What is the average cost of obtaining a Design in your jurisdiction?
Obtaining a design typically costs CA$2,000 to CA$3,000, depending on the objections raised, if any.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
There are two routes, namely filing a national application with CIPO, or filing an international application with the World Intellectual Property Organization (“WIPO”) through the Hague System and designating Canada.
2.13 Is a Power of Attorney needed?
No, a Power of Attorney is not needed.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
This is not applicable.
2.15 How is priority claimed?
Priority is claimed by making a request, including the priority date and country/office of each priority application, and submitting the request within six months from the earliest priority date (and no later than the registration date).
2.16 Can you defer publication of Design applications in your jurisdiction? If so, for how long?
Yes, publication may be deferred by requesting delay of registration and paying a fee. It may be delayed up to 30 months from the earliest priority date (or filing date if none), and no later than the registration date. An applicant can subsequently withdraw the request for delay of registration.
3 Grounds for Refusal
3.1 What are the grounds for refusal of registration?
The grounds for refusal of registration include lack of novelty, unregistrable subject matter, insufficient quality of the drawings or photographs, and inconsistency between the views.
3.2 What are the ways to overcome a grounds objection?
The objections raised in examiners’ reports may be overcome by responding with amendment, argument, or both. Amendment to the drawings or photographs that results in the application being for a design that differs substantially from the design on the filing date is not permitted.
If the objections are not overcome, the examiner issues a final examination report, indicating the remaining objections and inviting the applicant to respond one last time, by amendment or argument.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
If the response to a final examination report does not overcome the remaining objections, then the examiner forwards the application for review and a final decision. As part of a pilot project, the review is carried out by a subject matter expert of the designs branch of CIPO. After the review is carried out, a recommendation is made to the Director General (on behalf of the Minister), who in turn either refuses the application or registers the design.
3.4 What is the route of appeal?
A refusal to register can be challenged before the Federal Court by way of judicial review in the case of a national application (or by appeal in the case of a Hague application).
4 Opposition
4.1 Can a Design application be opposed, and if so, on what grounds?
No, the Industrial Design Act and Regulations do not provide for oppositions by third parties.
4.2 Who can oppose the registration of a Design in your jurisdiction?
This is not applicable.
4.3 What is the procedure for opposition?
This is not applicable.
5 Registration
5.1 What happens when a Design is granted registration?
CIPO notifies the applicant of registration and publishes the national application (or sends a statement of grant of protection to the International Bureau of WIPO in the case of a Hague application).
5.2 From which date following application do an applicant’s Design rights commence?
The design rights commence on the registration date.
5.3 What is the term of a registered Design right?
The term is the later of 10 years after the registration date and 15 years after the filing date in the case of a national registration (or the later of 10 years after the registration date and 15 years after the international registration date in the case of a Hague registration), subject to renewal.
5.4 How is a Design renewed?
To renew, a maintenance fee must be paid to CIPO no later than five years after the registration date of a national application. In the case of a Hague application, a maintenance fee must be paid to the International Bureau within five years from the registration date and subsequent periods.
6 Registrable Transactions
6.1 Can an individual register the assignment of a Design?
Yes, an individual can register a transfer of a registered design (or record a transfer of a pending application), such as an assignment, upon payment of the prescribed fee.
Registration of a transfer with CIPO is advised, because the transfer of a registered design that has not been registered is void against a subsequent transferee if the transfer to the subsequent transferee is registered.
Yes, but there are no prescribed types of licences that are unique to industrial designs. A design licence, like other intellectual property (“IP”) licences in Canada, may be sole, exclusive or non-exclusive, and may be royalty-bearing or royalty-free, geographically or commercially limited and may include a variety of other commercial terms that are agreed to by the parties.
6.2 Are there different types of assignment?
Designs, whether registered or unregistered, are transferable in whole or in part (e.g., with geographical limitations). Generally, the parties involved in the transaction can determine the commercial terms of the assignment and the allocation of the design rights.
6.3 Can an individual register the licensing of a Design?
No, the Industrial Design Act and Regulations do not require or expressly address the registration of licences for registered designs or pending design applications.
However, upon request from any party and payment of an associated recordal fee, CIPO will place a copy of a licence agreement or other document on file in a manner that is available to the public. This does not have legal effect, but can provide notice of a licensee’s entitlements to use of the design.
6.4 Are there different types of licence?
Yes, but there are no prescribed types of licences that are unique to industrial designs. A design licence, like other intellectual property (“IP”) licences in Canada, may be sole, exclusive or non-exclusive, and may be royalty-bearing or royalty-free, geographically or commercially limited and may include a variety of other commercial terms that are agreed to by the parties.
6.5 Are there any laws that limit the terms upon which parties may agree a licence?
In general, the parties to a licence can negotiate and include any mutually agreeable terms in the agreement, subject to general contract law and competition law issues.
However, licences that attempt to extract royalties beyond the enforceable term of a registered IP right (such as extending beyond the expiry date of the registration), including industrial design registration, can attract scrutiny under competition law as being an attempt to improperly extend the IP monopoly right beyond the length of its statutory term.
6.6 Can Designs be the subject of a compulsory licence (or licences of right), and if so, in what circumstances does this arise and how are the terms settled?
The Industrial Design Act and Regulations do not provide for compulsory licences.
6.7 Can a Design licensee sue for infringement?
An action for infringement of an exclusive right may be brought by an exclusive licensee of any right therein, subject to any agreement between the proprietor and the licensee. The proprietor must be made a party to the action.
6.8 Are quality control clauses necessary in a licence?
No. Unlike trademark licences, Canadian law does not require quality control provisions in an industrial design licence in order to maintain the integrity/validity of the design registration.
6.9 Can an individual register a security interest under a Design?
The Industrial Design Act and Regulations do not provide for registering a security interest in a design. However, a copy can be placed on file with CIPO, to be available to the public. Notably, a security interest relating to designs may be registered under provincial personal property security acts.
6.10 Are there different types of security interest?
This is not applicable.
7 Invalidity
7.1 What are the grounds for invalidity of a Design?
Grounds for invalidity exist where the design: lacks novelty; was not created by the applicant or the applicant’s predecessor in title; consists only of features that are dictated solely by a utilitarian function of the finished article; or is contrary to public morality or order.
7.2 What is the procedure for invalidation of a Design?
A person brings suit, typically by way of an action, before the Federal Court to expunge the design from the Register. A defendant in an action for infringement can counterclaim invalidity of the registration.
7.3 Who can commence invalidation proceedings?
An invalidation proceeding can be commenced before the Federal Court by any person aggrieved in the case of a national registration (or by any interested person in the case of a Hague registration).
7.4 What grounds of defence can be raised to an invalidation action?
A ground of defence includes lack of standing to bring an invalidation proceeding.
7.5 What is the route of appeal from a decision of invalidity?
An appeal may be brought to the Federal Court of Appeal by filing a notice of appeal.
8 Design Enforcement
8.1 How and before what tribunals can a Design be enforced against an infringer?
An action for infringement of a registered design may be commenced before the Federal Court of Canada or the provincial courts. Generally, an action is commenced in the Federal Court if the infringement has occurred or is occurring in more than one province, or the plaintiff is seeking country-wide relief (e.g., expungement of the design registration; nation-wide injunction). However, if additional claims are being asserted, such as common law passing off, a plaintiff may commence the proceeding in a provincial court.
8.2 Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?
Issues of invalidity and infringement are generally heard in the same proceeding. If bifurcation is ordered, it is generally of liability and damages issues.
8.3 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
The key pre-trial procedural stages are: pleadings (in which the parties set out the basis for their respective claims and defences); discovery (during which the parties exchange all relevant documents and information to the claims and defences being asserted, with a few limited exceptions, such as privileged documents); and expert reports, if any (such reports generally involve technical and/or financial expertise).
8.4 Are (i) preliminary, and (ii) final injunctions available, and if so, on what basis in each case?
Preliminary and permanent (“final”) injunctions are available in industrial design litigation. The test for a preliminary injunction requires the party seeking the injunction to prove that (i) there is a serious issue to be tried, (ii) the party will be irreparably harmed if the injunction is not granted, and (iii) the balance of convenience favours granting the injunction. The test is difficult to satisfy, so injunctions are not often granted. It is arguably easier to obtain a permanent injunction, as the infringement of the applicable rights has been proven at that stage of the proceeding, but generally the same considerations apply as between preliminary and permanent injunctions.
8.5 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary, and if so, how?
A party is required by the procedural rules of the Federal Courts and the provincial courts to disclose relevant documents or materials in its power, possession and/or control to the opposing party/parties, subject to certain limited exceptions.
8.6 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
Depending on the type of proceeding, submissions and evidence may be presented slightly differently. In an action, the court rules contemplate evidence being presented via live witnesses in the court room, who are cross-examined in front of the judge. In an application, the court rules contemplate evidence being presented via affidavits from representatives of the various parties and experts as applicable, with cross-examinations taking place outside of the court room. In such circumstances, the court is provided with transcripts from the cross-examinations rather than viva voce testimony.
In an action where a party proceeds by way of summary trial or judgment, the court will generally receive evidence by way of affidavit(s); however, the court may wish to also hear evidence live from witnesses and order the same. Typically, final submissions of the parties are made both in writing and orally.
8.7 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
Stays of proceedings are within the discretion of the court, and may be granted where there is a pending proceeding in another court, administrative tribunal or jurisdiction. Special circumstances are generally required for such a stay, though if requested with the consent of all the parties, it may be more readily granted. The party seeking the stay bears the burden of proving that the proceeding continuing in view of the circumstances would cause injustice or prejudice to them, and that the stay would not cause an injustice or prejudice to the other party/ parties to the proceeding.
8.8 Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?
The respective rules of the Federal Courts and provincial courts contemplate proceedings being brought by way of application where the facts are clear, there are limited credibility issues, and written affidavit evidence will therefore be sufficient. Applications are generally faster and less expensive than actions, which require lengthy discovery, but require more upfront effort by the applicant to commence the proceeding and put their evidence forward. This often means that the applicant has more upfront cost than is common in an action. If the timelines in the court rules are complied with, an application may be heard in a year.
In addition, where an action has been commenced, a party may move for a summary trial or judgment, to short-circuit the lengthy procedural steps that ordinarily govern such an action and get to the crux of the case. These types of motions are being used more recently to decide technical IP issues, such as invalidity, particularly where the issue will be dispositive of the proceeding. The timing for such a summary trial or judgment motion may be between one to two years depending on the complexity of the issue(s) at play.
Lastly, the Federal Court Rules contemplate simplified actions where the damages being sought are less than CA$50,000, and provincial small claims court may be an option where a party is seeking to recover only damages under a certain amount (e.g., CA$35,000 in Ontario and British Columbia; CA$15,000 in Manitoba).
8.9 Who is permitted to represent parties to a Design dispute in court?
A lawyer from any province or territory may represent parties to a design dispute in the Federal Court. There are some restrictions to lawyers in one province representing a party in another province, but that is also possible subject to those restrictions.
8.10 After what period is a claim for Design infringement time-barred?
No remedy may be awarded for an act of infringement committed more than three years before the commencement of the action for infringement.
8.11 Are there criminal liabilities for Design infringement?
There are no criminal liabilities for design infringement.
8.12 If so, who can pursue a criminal prosecution?
This is not applicable.
8.13 What, if any, are the provisions for unauthorised threats of Design infringement?
Where a party makes false or misleading statements asserting their rights and discrediting a competitor’s goods, services or business, the party may face claims of trade libel pursuant to the Trademarks Act, and liability for tortious interference with economic relations.
9 Defences to Infringement
9.1 What grounds of defence can be raised by way of non-infringement to a claim of Design infringement? For example, are there “must match” and/or “must fit” defences or equivalent available in the jurisdiction?
A registered design grants the proprietor an exclusive right to 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. Grounds of defence to infringement include: showing that the defendant did not engage in the foregoing prohibited activities; the registered design, or a design not differing substantially from the registered design, was not applied to the impugned article; and the impugned article is not the article in respect of which the design was registered.
9.2 What grounds of defence can be raised in addition to non-infringement?
Other grounds of defence include invalidity (lack of novelty, unregistrable subject matter), lack of standing (the plaintiff is not the proprietor or an exclusive licensee), lapse of registration for failure to pay maintenance fees, and statutory bar.
9.3 How does your jurisdiction deal with Design protection for spare parts?
CIPO considers a spare part that is sold separately qualifies as a “finished article” but does not qualify if it cannot be sold separately. If the spare part has a distinctive appearance, then it may qualify as having features that “appeal to and are judged solely by the eye”, but if the design consists only of features that are dictated solely by a utilitarian function of the spare part (or, in CIPO’s view, if a consumer chooses the spare part because the design is useful to them and not for its visual appeal), then it may not be registered. Spare parts may be protected as a kit, namely parts that can be assembled into a finished article, such that the exclusive right extends to prohibiting others from doing, in relation to the kit, any of the above prohibited activities that would constitute an infringement if carried out in relation to an article assembled from the kit.
10 Relief
10.1 What remedies are available for Design infringement?
The remedies available for design infringement are similar to those available for other IP rights infringement, and include damages or an accounting of profits, injunctive relief, punitive damages, and delivery up or destruction of the infringing article(s). In the case of an innocent infringer, only injunctive relief is available.
10.2 Are damages or an account of profits assessed with the issues of infringement/validity or separately?
Generally, issues of infringement/validity are assessed at the same time and in the same proceeding as damages or an accounting of profits. However, in certain circumstances, the court may bifurcate the quantum of monetary relief from liability issues (often with the consent of the parties).
10.3 On what basis are damages or an account of profits assessed?
Damages are an attempt to put the plaintiff in the position it would have been in had the infringement not occurred. As such, damages are calculated in view of the plaintiff’s lost profits as a result of the infringement, and may be based on lost sales or royalties. In contrast, an accounting of profits is intended to disgorge the profit the defendant made directly or indirectly as a result of the infringement. The plaintiff seeking an accounting bears the burden of proving the defendant’s gross sales, and the defendant then bears the burden of proving its offsetting expenses.
10.4 Are punitive damages available?
Yes, punitive damages are available where the conduct of the infringer is deserving of censure by the court (e.g., where the defendant engages in repeated, planned and deliberate, outrageous conduct over a lengthy period of time).
10.5 Are costs recoverable from the losing party and, if so, how are they determined and what proportion of the costs can usually be recovered?
Costs are generally awarded to the successful party at the discretion of the court. The costs may be based on a rubric found in the court rules, or as a lump sum at the court’s discretion. In the Federal Court, if the parties are commercially sophisticated and significant sums are involved, the successful party may be able to recover a lump sum of 25–50% of its legal fees, plus its reasonable disbursements. Where offers to settle were made by the parties, they may be considered by the court in accordance with the applicable rules when awarding costs. Failure to accept a more beneficial offer to settle than the end result will have adverse cost consequences.
11 Appeal
11.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
An appeal may be brought as of right from a first instance judgment by the appealing party by way of a notice of appeal. The applicable standard of review will be palpable and overriding error for questions of fact or mixed fact and law, and correctness on questions of law or mixed fact and law where there is an extricable legal error.
11.2 In what circumstances can new evidence be added at the appeal stage?
New evidence may be added at the appeal stage in special circumstances. It cannot have been discoverable prior to the first hearing had the party carried out their due diligence, and the new evidence must be material before the court may admit it.
12 Border Control Measures
12.1 Is there a mechanism for seizing or preventing the importation of infringing articles and, if so, how quickly are such measures resolved?
The Industrial Design Act and Regulations do not provide a mechanism for seizing or preventing the importation of an article that infringes a registered design.
However, to the extent that importation or exportation of goods, or their labels or packaging, bear – without the consent of the owner of a registered trademark for such goods – a trademark that is identical to or that cannot be distinguished in its essential aspects from that registered trademark, then border control measures are available under the Trademarks Act, Copyright Act and Customs Act.
13 Other Related Rights
13.1 To what extent are unregistered Design rights enforceable in your jurisdiction?
The Industrial Design Act and Regulations do not provide for unregistered design rights.
To the extent that a design has acquired sufficient distinctiveness, then it may be enforceable provincially as a common law trademark.
13.2 What is the term of unregistered Design rights enforceable in your jurisdiction?
This is not applicable.
13.3 What, if any, are the key differences between unregistered and registered Design rights in your jurisdiction?
This is not applicable.
13.4 If unregistered Design protection is available in your jurisdiction, is protection cumulative or mutually exclusive?
This is not applicable.
13.5 Is copyright available to protect industrial Designs?
As noted above in question 1.2, copyright protection may be available in certain circumstances.
14 Current Developments
14.1 What have been the significant developments in relation to Designs in the last year?
CIPO has launched an artificial intelligence-based tool to assist examiners with searching industrial design prior art. In addition, CIPO has renewed the pilot project in which requests for review of an application are forwarded to a subject matter expert of its designs branch, rather than to the Patent Appeal Board, before a final decision to refuse or register.
14.2 Please list three important judgments in the Designs sphere that have been issued within the last 18 months.
There have been no significant judgments in the last 18 months.
14.3 Are there any significant developments expected in the next year?
CIPO is expected to continue hiring new examiners and enhance e-services to reduce backlog and meet the increased interest in registering designs in Canada.
14.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
There is a growing trend of lump sum cost awards in IP litigation.
Acknowledgments
The authors wish to thank Rebecca Silverhart and Dian Thompson for their contributions and revisions to this chapter.
This article was first published in International Comparatives Legal Guides (ICLG) - Designs Laws and Regulations- Canada on November 4, 2022.