An industrial design registration in Canada protects a product’s unique appearance. An industrial design is important to sell a product as it gives a competitive edge in the market. Thus, businesses put a lot of lot of money and effort into protecting their industrial design. An industrial design can be registered with the Canadian Intellectual Property Office (CIPO). A registered design gives the owner exclusive rights to prevent others from using, selling, or making their design.
The industrial design regime in Canada is on a first to file basis. In simple words, CIPO grants exclusive grants to the person who files for registration of a design, irrespective of when it was created. The applicant may seek the help of an agent in registering their design, as it is a complex process and requires the knowledge of industrial design law and office procedures.
Novelty of the Design
CIPO only registers a design if it is novel. It means no identical or similar design has been disclosed to the public in Canada or anywhere else in the world. In the case that the applicant has disclosed their design to the public, a 12-month grace period is given that allows the applicant to register their design with CIPO. Design registration applications are kept confidential till registration or up to 30 months after the date of filing or priority. After the confidentiality period expires, the content of the application is made available to the public.
Design search
Before moving forward with the application process, the applicant must conduct a thorough design search. The applicant should search through the Canadian Industrial Design Database. The database shows all the designs that have been registered in Canada. The applicant may also go through the Intellectual Property data collections hosted by WIPO
Application requirements
There is no particular application form required for design registration in Canada. However, it must contain the following contents:
• Name and address of the applicant
• Name of the finished article
• A representation of the design
• The prescribed fees.
In addition, the following content may also be applicable:
• A descriptive statement
• Statement of limitation
• A claim of priority
The applicant may apply for design registration online or through mail to CIPO. After the application is sent, CIPO reviews the application to make sure it meets the basic requirements and establishes a filing date. If all the details are complete, the applicant receives a Notice of filing which includes the filing date and the application number. If the application is incomplete, an Omission notice is sent, informing the applicant has 2 months to submit the missing details.
Formality Examination
Once the filing date is established, the application is classified as per the article to which the design is applied. The examiner then reviews the application to ensure all formalities are met and that the design and the name of the finished article and other statements are sufficiently disclosed. It is done to conduct a novelty assessment and to make sure that the application relates to only one design.
Substantive examination
After the formality requirements are met, the design is compared to pending, registered and published designs in Canada and elsewhere. The whole application is reviewed with relevant prior art to determine if the design is novel or not. Following the examination, the design is either approved for registration or an Examiner’s report is sent to the applicant where the objections of the examiner are laid down. The report also indicates the changes that need to take place in the application to make it registrable.
The applicant after receiving the Examiner’s report must respond within 3 months. In the response, the applicant can amend the application to overcome the objections. The applicant may even provide arguments to the objections stated.
Refusal
In the case that the applicant’s arguments or amendments fail to overcome the objections laid down in the examination report, CIPO issues a Notice of Possible refusal. Thereafter, the applicant has 3 months from the date of notice to ask the Patent Appeal Board to review the decision. In the case that no response is received from the applicant, the application is considered for refusal. If the application is refused, the applicant may appeal to the Federal Court of Canada.
Registration
Once the application is approved it moves towards registration. CIPO issues a Notice of Industrial Design Registration which includes the representation of the design, registration details report and a notice to the owners regarding the maintenance of the exclusive right. Details about the registered design is entered in the Register of Industrial Design.
Validity
A design registration in Canada is protected for 10 years from the registration date or 15 years from the date of filing, whichever period ends later. The maintenance fee has to be paid no later than 5 years after the registration date.
