CIPO

Industrial Design Office Practice Manual

Version of August 28, 2019

In force since November 5, 2018

Industrial Design Office Practice Manual  1

Foreword  10

Document overview  10

Part 1 – Practices applicable to all applications and registrations  11

Chapter 1 – Administration  11

Section 1 – Communications with the Industrial Design Office  11

1.01 – Address for correspondence  11

1.02 – List of designated establishments  11

1.03 – Registered Mail™ and Xpresspost™ services of Canada Post  12

1.04 – Electronic mediums  13

1.05 – Electronic communications to the Industrial Design Office  13

1.05.01 – Online services  13

1.05.02 – Electronic file formats  13

1.05.03 – Facsimile  14

1.06 – Electronic communications from the Industrial Design Office  14

1.06.01 – Specifying a preferred method for receiving communications  14

1.06.02 – CIPO’s E-Mailbox application for industrial designs  15

1.06.02.01 – Configuring access and permissions for user accounts  15

1.06.02.02 – First time set-up  15

1.07 – Deadlines extended  16

1.08 – Communications with the Industrial Design Office  17

1.09 – Communications from a third party  17

1.10 – Material not in English or French  17

Section 2 – Agents and representation  18

2.01 – Appointment of agent  18

2.01.01 – Requirements  18

2.01.02 – Exceptions  18

2.01.03 – Effective date  18

2.02 – Revocation and change of agent  18

2.02.01 – Request for revocation  19

2.02.02 – Effective date  19

Section 3 – Transfers  19

3.01 – Non-application to Hague applications or registrations  19

3.02 – Request for recordal or registration of a transfer  19

3.02.01 – Mergers  19

3.03 – Evidence of a transfer  20

3.04 – Removal of a recordal or registration of a transfer  20

Section 4 – Licenses and security agreements, change of name or address  20

4.01 – Licenses and security agreements  20

4.02 – Change of name or address  20

Section 5 – Fees  21

5.01 – Payment  21

5.02 – Refunds  21

Section 6 – Access to applications and related documents  21

6.01 – Access to applications  21

6.02 – Copies of documents  22

6.02.01 – Ordering copies from the Client Service Centre  22

6.02.02 – Application made available on WIPO’s Digital Access Service  22

6.03 – Exception for Hague applications or registrations  22

Chapter 2 – Application procedures and requirements  23

Section 7 – Filing date of an application  23

7.01 – General  23

7.02 – Divisional applications  23

7.03 – Hague applications  23

Section 8 – Application content and requirements  24

8.01 – General  24

8.02 – Form requirements  24

8.03 – Information and fee required  24

8.04 – One design or variants per application  25

8.04.01 – Variants  25

8.04.02 – Set  26

8.05 – Representation requirements  27

8.05.01 – Specific requirements for photographs and reproductions  27

8.05.02 – Fully disclose the design  27

8.05.03 – Quality  29

8.05.03.01– Insufficient quality of reproductions  29

8.05.03.02 – Use of background  30

8.05.03.03 – Shadow  31

8.05.04 – Combination of photographs and reproductions  32

8.05.05 – Drawing techniques  33

8.05.05.01 – Shading  33

8.05.05.02 – Transparency and translucency  34

8.05.05.03 – Indefinite length and/or width and variable length in a portion of the article  35

8.05.05.04 – Articles of indefinite length or width with a constant cross-section  36

8.05.05.05 – Articles of indefinite length or width with a repeating surface pattern  37

8.05.05.06 – Articles of indefinite length or width with repeating 3D features  38

8.05.05.07 – Articles of indefinite length and width with a repeating surface pattern  39

8.05.05.08 – Articles of variable length in a portion  39

8.05.05.09 – Variable length in a portion that has repeating surface pattern  40

8.05.05.10 – Variable length in a portion that has repeating 3D features  40

8.05.05.11 – Cross-sectional views  41

8.05.05.12 – Enlarged fragmentary or magnified view  42

8.05.05.13 – Environment views  43

8.05.05.14 – Contrasting tones  44

8.05.05.15 – Open and closed positions  45

8.05.05.16 – Extended/retracted views  45

8.05.05.17 – Exploded views  46

8.05.06 – Colour  47

8.05.07 – Electronic Icons  48

8.05.08 – Computer-generated animated designs  49

8.06 – Application deemed to relate to all features shown  50

8.06.01 – Statement of limitation  50

8.06.02 – Design applied to part of the article  51

8.06.02.01 – Statement to limit the design to part of the article  51

8.06.02.02 – Dotted or broken lines to limit the design to part of the article  51

8.06.02.03 – Colouring to limit the design to part of the article  53

8.06.02.04 – Blurring to limit the design to part of the article  53

8.06.02.05 – Boundary line to limit the design to part of the article  54

8.06.03 – Optional descriptive statement  55

8.07 – Priority  55

8.07.01 – Request for priority  55

8.07.02 – Priority request requirements  56

8.07.02.01 – Deadline  57

8.07.02.02 – Countries  57

8.07.03 – Withdrawal of a request for priority  57

8.07.04 – Impact on the date on which an application is made available to the public  57

8.07.05 – Correction to a request for priority  57

8.07.06 – Exceptions  57

8.07.07 – Non-application to Hague applications  58

8.07.08 – Request for priority documents  58

8.07.08.01 – WIPO’s Digital Access Service  58

8.07.08.02 – Translation  58

8.07.08.03 – Consequence for non-compliance  59

8.07.09 – Search based on priority  59

8.08 – Divisional applications  60

8.08.01 – Divisional applications  60

8.08.02 – Requirements  60

8.08.03 – Deadline to file a divisional  60

8.08.03.01 – Exception  60

8.08.04 – Deemed actions in relation to request for priority  61

Section 9 – Classification  61

9.01 – New classification system  61

Section 10 – Advanced examination  62

10.01 – Request and fee  62

Section 11 – Delay of registration  62

11.01 – Request and fee  62

11.02 – Timing of request  62

11.03 – Withdrawal of a delay of registration  62

Section 12 – Withdrawing an application  63

12.01 – Request  63

12.02 – Impact on the date on which the application is made available to the public  63

Chapter 3 – Examination  63

Section 13 – Industrial design subject matter  63

13.01 – General  63

13.02 – Registrable subject matter  64

13.02.01 – “Features of shape, configuration, pattern or ornament”  64

13.02.02 – “and any combination of those features”  64

13.02.03 – “in a finished article”  64

13.02.03.01 – Definition of “finished article”  64

13.02.03.02 – Name generally known and understood by the consumer  65

13.02.03.03 – Component parts of an article  65

13.02.04 – “appeal to and are judged solely by the eye”  65

13.03 – Unregistrable subject matter  65

13.03.01 – Solely Functional Designs  65

13.03.02 – Design contrary to public morality or order  65

Section 14 – Examiner reports  66

14.01 – Reports  66

14.01.01 – Response time and extension of time  67

14.01.02 – Examination - Relevant Applications  67

14.01.02.01 – Applications that cannot be disclosed  67

14.01.02.02 – If assessment of priority claim is necessary for novelty  67

Section 15 – Abandonment and reinstatement  67

15.01 – Abandonment  67

15.02 – Reinstatement  68

Section 16 – Novelty assessment  68

16.01 – Guiding principles  68

16.01.01 – Novel design  68

16.01.02 – Priority date of the design  68

16.01.03 – Features of the design  68

16.01.04 – Relevant prior art  69

16.01.04.01 – Exclusions from prior art  69

16.01.05 – Comparison of the prior art with the applied for design  69

16.02 – Search based on date of priority  70

16.02.01 – Language requirements  71

16.02.02 – A supported priority claim  71

Section 17 – Amendments to an application  71

17.01 – General rule  71

17.02 – Limitations on amendments  71

17.02.01 – Modify the identity of the applicant  71

17.02.02 – Add a representation of a design  71

17.02.03 – Change a design or a statement  72

17.02.04 – Add an indication of divisional application  72

17.02.05 – Change to a substantially different name of the finished article after the application is made available to the public  72

17.03 – Clerical errors  72

Section 18 – Refusal, review and appeal  72

18.01 – Notice of Possible Refusal and the refusal  72

18.02 – Review by the Patent Appeal Board  72

18.03 – Appeal of a refusal  73

18.03.01 – National applications  73

18.03.02 – Hague applications  73

Chapter 4 – Registration and publication  73

Section 19 – Registration and exclusive right  73

19.01 – General information  73

19.02 – Duration of exclusive right  73

19.02.01 – Duration: National registrations  73

19.02.02 – Duration: Hague registrations  74

19.03 – Delay of registration  74

19.03.01 – Non-application to Hague applications  74

19.04 – The Register of Industrial Designs  74

19.04.01 – Hague registrations  74

19.05 – Correction to a registration  74

19.06 – Expungement and invalidation  74

19.06.01 – Non-application to Hague registrations  75

Section 20 – Applications and information made available to the public  75

20.01 – Prescribed date for making the application available to the public  75

20.01.01 – Applications made available to the public  75

20.01.02 – Documents relating to multiple applications  75

20.01.03 – Non-application to Hague applications  75

20.01.04 – Withdrawn applications  75

20.02 – Changes made to the date of priority  76

20.03 – Canadian Industrial Designs Database  76

20.03.01 – Applications made available online  76

20.03.02 – Weekly update  76

20.03.03 – Hague Express database  76

Section 21 – Maintenance of exclusive right  76

21.01 – General information  76

21.01.01 – Payment of the maintenance fee  76

21.01.02 – Late maintenance  77

21.02 – Non-application to Hague registrations  77

Part 2 – Practices in respect of Hague applications and registrations  77

Chapter 5 – Filing an international application and designating Canada  77

Section 22 – Entitlement to file  77

22.01 – Eligible Hague System users  77

22.02 – Eligible designated countries  77

Section 23 – How to file an international application  78

23.01 – Filing with WIPO  78

23.02 – Examination of formalities  78

Section 24 – The International Register and Bulletin  78

24.01 – Publication of international registrations  78

24.02 – Copies of Hague applications and registrations  79

Chapter 6 – Examination and registration of Hague Applications  79

Section 25 – Hague Applications  79

25.01 – International registration deemed to be a Hague application  79

25.02 – Filing date of a Hague application  79

25.03 – Holder  79

Section 26 – Notification of Refusal  80

26.01 – Examination report through a Notification of Refusal  80

26.01.01 – Objection in relation to Class 32  80

26.02 – Time period for the Industrial Design Office to issue a Notification of Refusal  80

26.03 – Response to a Notification of Refusal  80

26.03.01 – Refusal maintained  81

26.03.02 – Objection overcome  81

Section 27 – Appeal  81

27.01 – Appeal to the Federal Court  81

Section 28 – Hague registration  81

28.01 – Statement of grant of protection  81

28.02 – Term of protection  81

Section 29 – Invalidation  82

29.01 – Jurisdiction of the Federal Court  82

Chapter 7 – Other information pertaining to Hague applications or registrations  82

Section 30 – Request for priority  82

30.01 – Request made through the International Bureau  82

30.02 – Correction of a request for priority  82

30.03 – Withdrawal of a request for priority  83

Section 31 – Transfer of an international registration  83

31.01 – Request for transfer  83

31.02 – Attestation  83

Section 32 – Corrections  83

32.01 – Correction by the International Bureau  83

32.02 – Refusal of the correction  83

Section 33 – Maintenance of a Hague registration  84

33.01 – Request for maintenance  84

33.02 – Fees for renewal  84

33.03 – Renewal period  84

33.03.01 – Renewal request and payment  84

33.03.02 – Late renewal  85

Part 3 – Transitional measures  85

Chapter 8 – Transitional provisions: Act  85

Section 34 – Applicability of the Act to applications with a filing date before the coming into force  85

34.01 – Former Act applicable  85

34.01.01 – Duration of exclusive right  85

34.02 – Exceptions  85

34.02.01 – Section 5: examination  85

34.02.02 – Section 13: assignments and transfers  86

34.02.03 – Section 20: clerical errors  86

34.02.04 – Section 21: time period extended  86

34.02.05 – Section 24.1: electronic form and means  86

Section 35 – Applications without a filing date  87

35.01 – Cannot establish filing date  87

Section 36 – Applicability of the former Act to registered designs  87

36.01 – Applicable sections of the former Act  87

36.02 – Exceptions  87

36.02.01 – Section 3: Register of Industrial Design  87

36.02.02 – Section 13: assignments and transfers  87

36.02.03 – Section 20: clerical errors  88

36.02.04 – Section 21: extension of time  88

36.02.05 – Section 24.1: electronic form and means  88

Chapter 9 – Transitional provisions: Regulations  89

Section 37 – Applicability of the Regulations to applications with a filing date before the coming into force of the Act and designs registered on the basis of such applications  89

37.01 – Current Regulations applicable  89

37.02 – Exceptions  89

37.02.01 – Communications  89

37.02.02 – Applications  89

37.02.03 – Filing date  91

37.02.04 – Examination  91

37.02.04.01 – Delay of registrations and associations  91

37.02.05 – Amendments  92

37.02.06 – Priority  92

37.02.07 – Exclusion from prior art  93

37.02.08 – Applications made available to the public  94

37.02.09 – Maintenance and term of protection  94

ANNEX A: Matters specified by the Commissioner of Patents under the Industrial Design Act and Industrial Design Regulations  95

ANNEX B: Revision history  98


 


Blue exclamation mark  Update notice

The IDOP Manual was last updated on August 28, 2019. To learn more about the changes, please consult Annex B of the Manual.

Foreword

The Industrial Design Office Practice Manual (IDOP) provides information on the operational procedures and examination practices of the Industrial Design Branch, commonly referred to as the Industrial Design Office of the Canadian Intellectual Property Office (CIPO).

Practices expressed in the IDOP reflect the Industrial Design Office’s interpretation of the Industrial Design Act [1] (the Act or IDA), the Industrial Design Regulations [2] (the Regulations or IDR) and jurisprudence as of the date of the last update. While this Manual provides information on current office practice, it is not binding on the Industrial Design Office. In the event of any inconsistency between the IDOP Manual and the applicable legislation, the legislation must be followed.

This Manual replaces the IDOP Guide dated May 2, 2017, and has been updated to reflect changes to the Act and the Regulations, which came into force on November 5, 2018. The IDOP Manual will be updated periodically to reflect changes to the statutory, regulatory and jurisprudential framework governing industrial design rights in Canada. For information on the change history, please consult Annex B of this Manual.

Document overview

Many of the practices outlined in this Manual were developed to support Canada’s accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs [3] (the Hague Agreement), which establishes an international registration system – the Hague System – that allows industrial designs to be registered in multiple countries or jurisdictions through a single streamlined process. Other provisions have been introduced to modernize Canada’s industrial design regime by updating, clarifying and codifying aspects of the industrial design framework.

The IDOP is structured in three parts:

Part 1 – Practices applicable to all applications and registrations

Chapter 1 – Administration

Section 1 – Communications with the Industrial Design Office

1.01 – Address for correspondence

Mail intended for the Industrial Design Office must be addressed to:

Industrial Design Office

Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A 0C9

Documents, information or fees delivered to the above address are deemed to have been received on the actual date of their delivery if they are delivered when CIPO is open to the public (8:30 a.m. to 4:30 p.m. (Eastern Time) Monday to Friday).

Documents, information or fees delivered at a time when CIPO is closed to the public will be deemed to have been received on the day on which CIPO is next open to the public. Please be advised that once CIPO receives correspondence it cannot be returned to the sender, even if the sender states that the correspondence was sent in error. All material must be addressed to the “Industrial Design Office” and enclosed in a sealed envelope.

1.02 – List of designated establishments

CIPO will accept physical delivery of documents, information or fees, at designated establishments. All material must be addressed to the “Industrial Design Office” and enclosed in a sealed envelope. The following establishments are designated:

Innovation, Science and Economic Development Canada

C.D. Howe Building

235 Queen Street, Room S-143

Ottawa ON K1A 0H5

Tel.: 343-291-3436

8:30 a.m. to 4:30 p.m. (local time) Monday to Friday

Innovation, Science and Economic Development Canada

Sun Life Building

1155 Metcalfe Street, Room 950

Montreal QC H3B 2V6

Tel.: 514-496-1797

Toll-free: 1-888-237-3037

8:30 a.m. to 4:30 p.m. (local time) Monday to Friday

Innovation, Science and Economic Development Canada

151 Yonge Street, 4th Floor

Toronto ON M5C 2W7

Tel.: 416-973-5000

8:30 a.m. to 4:30 p.m. (local time) Monday to Friday

Innovation, Science and Economic Development Canada

Canada Place

9700 Jasper Avenue, Suite 725

Edmonton AB T5J 4C3

Tel.: 780-495-4782

Toll-free: 1-800-461-2646

8:30 a.m. to 4:30 p.m. (local time) Monday to Friday

Innovation, Science and Economic Development Canada

Library Square

300 West Georgia Street, Suite 2000

Vancouver BC V6B 6E1

Tel.: 604-666-5000

8:30 a.m. to 4:30 p.m. (local time) Monday to Friday

Documents, information or fees delivered to a designated establishment on a day when CIPO is open to the public will be deemed to be received on the day on which they are delivered to that designated establishment. If CIPO is closed to the public, documents, information or fees will be deemed to be received on the day on which CIPO is next open to the public. For example, if correspondence intended for the Industrial Design Office is delivered to the designated establishment in Toronto on June 24, it will not be considered to be received on June 24 as CIPO is closed on that day (St-Jean-Baptiste Holiday in Quebec). It will be considered received on the day on which CIPO is next open to the public.

1.03 – Registered Mail™ and Xpresspost™ services of Canada Post

The Registered Mail™ and Xpresspost™ services of Canada Post are designated establishments to which documents, information or fees intended for the Industrial Design Office may be delivered.

CIPO considers that documents, information or fees delivered through these services are received on the day indicated on the mailing receipt from Canada Post, provided that CIPO is open to the public on that day. If CIPO is closed to the public on that day, the documents, information or fees will be deemed to be received on the day when CIPO is next open to the public.

1.04 – Electronic mediums

Documents, information or fees may be submitted by physical delivery of an electronic medium directly to CIPO or to a designated establishment. These documents, information or fees will be deemed to have been received on the day on which they are delivered, as described in sections 1.01, 1.02 or 1.03 of this Manual, as applicable.

All electronic mediums must be free of worms, viruses or other malicious content. Files with malicious content will be deleted.

The Industrial Design Office will accept the following types of electronic mediums: CD-ROM, CD-R, DVD, DVD-R, and USB stick. See section 1.05.02 of this Manual for information on the acceptable electronic file formats.

1.05 – Electronic communications to the Industrial Design Office

Documents, information or fees may be sent by using the online services identified below or by facsimile. Documents, information or fees submitted by these electronic means are deemed to have been received on the day on which CIPO receives them (Eastern Time). Accordingly, the filing date of an application filed using online services or facsimile will be the date on which all required information was received by CIPO whether it is open to the public or not.

1.05.01 – Online services

Communications may be sent via CIPO’s website by accessing the following web pages:

1.05.02 – Electronic file formats

The acceptable file formats for documents submitted electronically via the website are WPD, DOC, DOCX and PDF.

The acceptable file formats for the representation of a design are PDF, JPEG, TIFF, and GIF. The file size limit is of 60 MB for PDF and 10 MB for the other file formats. Dimensions of the scanned/stored images must match those of the paper requirements, namely 21.59 cm by 27.94 cm (8.5 in by 11 in) and be of a resolution of at least 300 dpi. Any representation of a design not meeting minimal requirements will be automatically converted.

1.05.03 – Facsimile

Communications in black and white may be sent by facsimile to the following numbers:

Communications in colour must be sent to the following number:

Note that the model of facsimile is a Xerox C505/X and that this information may be needed to ensure a successful colour transmission.

Communications sent to any other number will be considered not to have been received by CIPO. The facsimile electronic transmission report will constitute acknowledgment of receipt from CIPO.  

Please note that confidentiality of the facsimile transmission process cannot be guaranteed and that CIPO strongly discourages the use of a computer facsimile interface or internet-based facsimile services due to technical issues with reception.

If there is a fee associated with the communication, the preferred method of payment must be prominently displayed on the Fee Payment Form to ensure expedient processing.

1.06 – Electronic communications from the Industrial Design Office

Communications from the Industrial Design Office may be made available electronically through CIPO’s E-Mailbox application for industrial designs. E-Mailbox allows applicants to access communications quickly and efficiently via an online platform, providing an alternative to paper-based correspondence. Access rights to electronic communications, including granting access to other users, can be managed through the new CIPO’s E-Access application for industrial designs.

1.06.01 – Specifying a preferred method for receiving communications

The applicant may specify a preferred method for receiving communications from the Industrial Design Office, either paper or electronic. This can be done in a cover letter accompanying the application or, if filed online, by selecting a preferred method of correspondence in the appropriate section of CIPO’s Industrial Design E-Filing application.

If paper correspondence is preferred, the applicant will receive communications from the Industrial Design Office on paper. When the Industrial Design Office receives a paper application, it will also continue to communicate by paper unless the application clearly indicates a preference for communications to be made available electronically.

If electronic correspondence is preferred, communications will be made available electronically on CIPO’s E-Mailbox application for industrial designs. Please note that an email address is required to use this service.

Should the applicant wish to change its preferred method for receiving communications, this can be done by informing the Industrial Design Office in writing or through the Industrial Design General Correspondence application.

1.06.02 – CIPO’s E-Mailbox application for industrial designs

Should the applicant indicate that electronic correspondence is preferred; communications will be made available electronically on CIPO’s E-Mailbox application for industrial designs.

Any communication made available by the Industrial Design Office to the applicant using CIPO’s E-Mailbox application will be deemed to have been sent to the applicant. The Industrial Design Office will use the E-Mailbox application only if the applicant has consented to receiving communications by that means.

Once a communication has been made available by the Industrial Design Office on the E-Mailbox application, the applicant will be notified of that fact via an email sent to the email address of record.

Please note that the applicant cannot use the E-Mailbox application to respond to communications from the Industrial Design Office. At this time, any communication to the Industrial Design Office must be made by paper, through the online services identified in section 1.05.01 of this Manual or by facsimile. CIPO is currently developing an Industrial Design E-Amendment application which is set to release later in 2019.

1.06.02.01 – Configuring access and permissions for user accounts

To maintain the confidentiality of industrial design applications and to ensure only authorized individuals are able to access communications in the E-Mailbox, access and permissions must be configured for each user account.

Access and permissions can be managed using CIPO’s E-Access application for industrial designs. Through E-Access, a user is authenticated and can grant or remove user access rights to the E-Mailbox.

1.06.02.02 – First time set-up

Once the Industrial Design Office receives an indication that electronic correspondence is preferred as described in section 1.06.01 of this Manual, the applicant will receive a Notification of Authorization, on paper, containing information which may be used to authenticate themselves using the E-Access application. This is a one-time process required to access the E-Mailbox application. Please note that applicants need to have a valid e-mail address and, an account with Innovation, Science and Economic Development Canada (ISED), known as a “My ISED Account”. If you do not already have a My ISED Account, you will need to create one.

An authenticated user will be able to manage permissions, and will have access to the E-Mailbox to retrieve view communications from the Industrial Design Office.

Note that law firms have a unique E-Mailbox for all their respective files, and access rights can be granted to different agents and staff using the E-Access application. A law firm with offices in multiple cities may choose to have a single E-Mailbox, or separate E-Mailboxes for each of its distinct locations. The first individual from a law firm to indicate that electronic correspondence is preferred will receive the Notification of Authorization and will be able to complete the first time set-up and grant access rights to other users from the firm.

Finally, note that an applicant who filed using CIPO’s Industrial Design E-Filing application and specified that electronic correspondence is preferred will be automatically granted access to communications pertaining to that application. Those communications will be made available on the E-Mailbox and can be accessed with the My ISED Account used at the time of filing without having to be first authenticated. If the applicant is represented, access will be granted to the law firm of the appointed agent.

1.07 – Deadlines extended

If a deadline ends on one of the following days or on a day that is designated by the Minister, that deadline will be extended to the next day on which CIPO is open:

Not all provincial and territorial holidays are days where deadlines will be extended. It is recommended that applicants be mindful of their specific local holidays and ensure that any response to the Industrial Design Office be filed as early as possible. If the time period to reply to a report is insufficient, the applicant may request an extension. See section 14.01.01of this Manual for more details on extension of time.

1.08 – Communications with the Industrial Design Office

A person doing business before the Industrial Design Office must provide their postal address.

Generally, applicants choose to appoint an agent to represent them. See section 2.01 of this Manual for more information on how to appoint an agent. If an agent has been appointed, the Industrial Design Office will send communications to that agent.

If no agent has been appointed, the Industrial Design Office will only communicate with the applicant. If desired, an applicant may provide an address for correspondence that is different from the applicant’s address.

If there is more than one applicant, the Industrial Design Office will communicate with the applicant authorized by the other applicant(s) to act as the address for correspondence. If an address for correspondence was not provided, the Industrial Design Office will communicate with the first applicant named in the application.

Any written communication in respect of an application must contain the name of the applicant and, if known, the application number.

In accordance with subsection 8(1) of the Regulations, written communications in respect of a registered design must contain the name of the registered proprietor and the registration number. All documents submitted to the Industrial Design Office must be clear, legible and permit direct reproduction. The Industrial Design Office may ask applicants to resubmit documents if they do not meet these requirements.

1.09 – Communications from a third party

Generally, the Industrial Design Office will not send correspondence to a third party concerning the prosecution of an application. Third party correspondence submitted to the Industrial Design Office with the apparent intent of protesting the registration of a design will be acknowledged and placed on file; no information will be provided to a third party as to the action taken by the Industrial Design Office. Note that this communication forms part of the file and will be made available to the public with the application or registration. For more information on the prescribed date on which an application will be made available to the public, see section 20.01 of this Manual.

1.10 – Material not in English or French

The Industrial Design Office will disregard any part of a document that is submitted in a language other than French or English with the exception of the representation of the design or a priority document. See section 8.07.08 of this Manual for more information on requests for priority documents.

Relevant provision(s): 24.1(1) IDA; 2, 4, 5(1) to (3), 6 to 11 IDR.

Section 2 – Agents and representation

2.01 – Appointment of agent

A person may represent themselves, or appoint an agent to represent them in business before the Industrial Design Office. If an agent is appointed, the applicant must be represented by that agent to prosecute their application. If an agent has been appointed, the Industrial Design Office will accept only instructions from that agent to avoid receiving different or conflicting instructions.

2.01.01 – Requirements

In order for an agent to be considered appointed, the Industrial Design Office must receive a notice of appointment that includes the name and postal address of the appointed agent. The applicant’s signed authorization to appoint an agent is not required.

The appointed agent should be identified clearly, either in the application itself or in a separate document. When the Industrial Design Office receives this information, it will send a confirmation of appointment to both the applicant and the appointed agent, except when the agent is appointed in the application at time of filing.

If the notice of appointment omits the required information, the Industrial Design Office will notify both the applicant and the requestor that the appointment is considered without effect.

2.01.02 – Exceptions

Although the Regulations generally stipulate that if an agent is appointed, the applicant must be represented by that agent to prosecute their application, exceptions exist where, notwithstanding the appointment of an agent, an applicant may represent themselves or be represented by an authorized person, to do any of the following:

2.01.03 – Effective date

The appointment of an agent is effective beginning on the day on which the Industrial Design Office receives the notice of appointment.

2.02 – Revocation and change of agent

The appointment of an agent may be revoked at any time by sending a notice to the Industrial Design Office.

2.02.01 – Request for revocation

The appointed agent may be changed by sending a notice of revocation of the former agent to the Industrial Design Office and a notice of appointment with the name and postal address of the newly appointed agent. The signature of the applicant is not required to revoke an agent.

When notice of the revocation is provided by the current agent, the applicant or the person authorized by the applicant, the Industrial Design Office will send a confirmation to the revoked agent and the applicant.

2.02.02 – Effective date

The revocation of an agent and the appointment of a new agent start on the day on which the Industrial Design Office receives the notice of revocation and the notice of appointment.

Relevant provision(s): 12(1) to (6) IDR.

Section 3 – Transfers

3.01 – Non-application to Hague applications or registrations

Specific rules apply to the transfer of Hague applications or registrations. These are outlined in section 31 of this Manual.

3.02 – Request for recordal or registration of a transfer

Every design, whether registered or unregistered is transferable, in whole or in part. The Industrial Design Office will record or register a transfer upon receipt of a written request that includes the name and postal address of the transferee and the fee of $100 per application or registration, as set out in Item 4 of the Tariff of Fees. An applicant or any person authorized by them may make a request to record a transfer and pay the prescribed fee, whether there is an agent on file or not.

3.02.01 – Mergers

A merger usually results in a change in the identity of the applicant or registered proprietor. Consequently, a request to record a merger is generally treated as a request for transfer. The Industrial Design Office will record or register the merger upon receipt of a written request that includes the name and postal address of the new entity and the fee of $100 per application or registration, as set out in Item 4 of the Tariff of Fees.

Additionally, unless submitted by the applicant or the registered proprietor, evidence of the merger is required. The Industrial Design Office will assess all evidence on a case-by-case basis and will contact the requestor if additional documentation or clarification is required.

If the merger does not result in a change to the identity of the applicant or the registered proprietor, please inform the Industrial Design Office when submitting your request. Additionally, a merger may also merely result in a change of name. In both cases, the accompanying $100 fee per application or registration is not required.

3.03 – Evidence of a transfer

Evidence of the transfer is required when a request to record or register a transfer is submitted by the transferee. The Industrial Design Office will assess all evidence on a case-by-case basis and will contact the requestor if additional documentation or clarification is required.

Evidence of the transfer is not required when a request to record or register a transfer is submitted by the applicant or the registered proprietor.

3.04 – Removal of a recordal or registration of a transfer

If the Industrial Design Office receives satisfactory evidence that the recordal or registration of a transfer should not have been made, it will remove the recording or registration of that transfer.

The Industrial Design Office is not authorized to remove the registration of a transfer on a registered design for the reason only that the transferor had previously transferred the registered design to another person.

Relevant provision(s): 13(1) to (6) IDA; 34 IDR.

Section 4 – Licenses and security agreements, change of name or address

4.01 – Licenses and security agreements

The Act and Regulations do not provide for the recordal of licenses and security agreements. However, any person may provide the Industrial Design Office with copies of a licence and/or a security agreement that relates to a registered design or an application for the registration of a design. The Industrial Design Office will keep these documents on file and make them available to the public to the extent that they relate to a registered design or an application that is available to the public. See section 20.01 of this Manual for more information on when applications and related documents are made available to the public.

A confirmation of receipt will be sent to the requestor.

4.02 – Change of name or address

The Industrial Design Office will register a change of name or address of a registered proprietor upon request.

If an applicant requests to change the name or address on their application, the Industrial Design Office will process this request as an amendment to the application.

In both cases, a change that alters the identity of a person is considered to be a transfer and not a change of name. See section 3.01 of this Manual for more information on transfers.

In the event that the wrong applicant was named in the application, the Industrial Design Office may substitute the applicant before registration if it is satisfied that the person was the proprietor when the application was filed.

Relevant provision(s): 4(2) IDA; 25(2)(a), 35 IDR.

Section 5 – Fees

Fees are itemized in the Tariff of Fees in the Schedule of the Regulations.

5.01 – Payment

The applicant or any person authorized by the applicant may pay fees, even when an agent is appointed.

For more information on the payment of fees, please refer to the practice notices entitled Fee Payment Practice of the Canadian Intellectual Property Office, and Fee Payment: General Authorization to Charge a Deficiency, dated June 8, 2009.

5.02 – Refunds

Upon written request, the Industrial Design Office will refund any amount paid in excess of the prescribed fee(s). A request for refund must be received by the Industrial Design Office no later than three years after the day on which the payment was made.

Relevant provision(s): 12(4), 38 IDR.

Section 6 – Access to applications and related documents

6.01 – Access to applications

Industrial design applications are confidential until the prescribed date on which they are to be made available to the public. Please see section 20.01 of this Manual for details on determining the prescribed date.

Prior to being made available to the public, applications are available only to the applicant or the applicant's agent, unless the Industrial Design Office receives written authorization from the applicant or the applicant's agent allowing someone else to obtain them.

6.02 – Copies of documents

6.02.01 ­– Ordering copies from the Client Service Centre

Please contact the Client Service Centre to order copies of an application or registration. More information on the Client Service Centre’s products and services is found on the Client Service Centre web page.

You may also order copies of documents online through CIPO’s website.

6.02.02 – Application made available on WIPO’s Digital Access Service

An industrial design application can be made available to other Intellectual Property Offices (IPOs) through the World Intellectual Property Office (WIPO)’s Digital Access Service, an electronic digital library allowing priority documents to be securely exchanged between participating IPOs.

The Industrial Design Office will make available the application only upon written request. Such requests may be made either at the time of filing or subsequently. If the applicant chooses to make the request at the time of filing, it can be included in a cover letter for an application filed on paper, or in the Comments box of the Additional Services section for applications filed using CIPO’s Industrial Design E-Filing application. Alternatively, such request may also be made subsequently by sending a letter to the Industrial Design Office or by using CIPO’s Industrial Design General Correspondence application.

Once the application is made available on WIPO’s Digital Access Service, the Industrial Design Office will send to the applicant a notice of confirmation, indicating the access code which may be shared with a participating IPO.

Please note that all industrial design applications can be made available through WIPO’s Digital Access Service, regardless of when they were filed.

6.03 – Exception for Hague applications or registrations

For copies of Hague applications or registrations, please contact the WIPO International Bureau. See the Extract and Certified Copies section of the Hague Guide for Users for more information.

Copies of Canadian documentation in relation to Hague applications or registrations can be obtained by contacting the Client Service Centre.

Relevant provision(s): 32 IDR.

Chapter 2 – Application procedures and requirements

Section 7 – Filing date of an application

7.01 – General

The filing date of an application, other than for a divisional or a Hague application, is the day on which the Industrial Design Office receives all of the following:

The Industrial Design Office will issue a Notice of Filing after all of the above requirements are met. If these requirements are not met, the Industrial Design Office will notify and request that the applicant submit the missing information no later than two months after the date of the notice. No extension of time can be given. If the Industrial Design Office does not receive the missing information by the deadline indicated in the notice, the application will be deemed never to have been filed. Any fees paid will not be refunded.

7.02 – Divisional applications

The filing date of a divisional application is the same as that of the original application. Information on the Industrial Design Office’s practices relating to divisional applications is provided in section 8.08 of this Manual.

7.03 – Hague applications

The filing date of a Hague application is the date of registration of the corresponding international registration. More information on international registration and the filing date of a Hague application is provided in section 25 of this Manual.

Relevant provision(s): 4(3) IDA; 21(2) to (4), 41(1) and (2) IDR.

Section 8 – Application content and requirements

8.01 – General

The use of a particular form is not required. The following table highlights key mandatory application requirements, as well as optional content that can be included in an application. These elements are explained below:

Mandatory content

Additional content where applicable

• Name and postal address of applicant;

• Name of the finished article;

• Representation of the design(s); and,

• Examination fee.

• Address of the agent, if one is appointed (see section 2.01);

• Descriptive statement;

• Statement of limitation;

• Priority claim; and,

• Indication of divisional application

Relevant provision(s): 4(1)(a) to (c), 8.1 IDA; 12(6), 16, 17(2), 18, 20(3), 26(2), 31, 37 IDR.

8.02 – Form requirements

Applications and documents submitted to the Industrial Design Office must meet the following form requirements:

Relevant provision(s): 9, 10 IDR.

8.03 – Information and fee required

Applications submitted to the Industrial Design Office must contain the following information:

Relevant provision(s): 4(1) IDA; 16, 37 IDR.

8.04 – One design or variants per application

An application must be limited to one design applied to a single finished article or set, or to variants applied to a single finished article or set. If an application contains more than one design, the applicant will be required to restrict the application to one design or variants, applied to a single finished article or set.

8.04.01 – Variants

“Variants” are defined as designs applied to the same article or set and not differing substantially from one another. Generally, to be accepted as variants, the designs must be very similar and possess the described features without substantial variation as illustrated in Example 1.

Example 1 – Variant designs

Titre : Example 1 – Variant designs - figure 1.1 - Description : Figure 1.1 shows a perspective view of the first variant of the Coffee Tumbler; with one 3D circular ring on the top, one ring in the middle and one ring in the bottom.

Fig. 1.1

Titre : Example 1 – Variant designs - Figure 2.1 - Description : Figure 2.1 shows a perspective view of the second variant of the Coffee Tumbler; with one 3D circular ring on the top, two rings in the middle and one ring in the bottom.

Fig. 2.1

Titre : Example 1 – Variant designs - figure 3.1 - Description : Figure 3.1 shows a perspective view of the third variant of the Coffee Tumbler; with one 3D circular ring on the top, two rings in the middle, one of them in broken lines and one ring in the bottom.

Fig. 3.1

Finished article: Coffee Tumbler

Statement: The design is limited to features of shape, configuration and ornament of the Coffee Tumbler as shown in the reproductions.

Fig. 1.1 is a perspective view of the first variant of the Coffee Tumbler;

Fig. 2.1 is a perspective view of the second variant of the Coffee Tumbler; and,

Fig. 3.1 is a perspective view of the third variant of the Coffee Tumbler.

 

Relevant provision(s): 2 IDA; 20(1) IDR.

8.04.02 – Set

Section 2 of the Act defines a “set” as 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 are applied such as a cutlery set where the same design is applied to a fork, a knife and a spoon would constitute a set according to this definition.

It should be clear from the application that the design applies to a set. If a statement is provided, it should refer only to the design features common among all pieces of the set (e.g. the identical design or variants applied to each piece of the set). It is also acceptable to indicate the location of these features on each piece. Individual views of each article of the set can also be included. Example 2 illustrates a set.

Example 2 – Set

Titre : Example 2 - Set of Cutlery - Figure 1 - Description : Figure 1 shows a front view of the Set of Cutlery with a spoon, fork and knife. The same pattern is applied to the length of the handle on all three.

Fig. 1

Finished article: Set of Cutlery

Statement: Fig. 1 is a front view of the Set of Cutlery.

Relevant provision: 2 IDA

8.05 – Representation requirements

8.05.01 – Specific requirements for photographs and reproductions

Photographs or reproductions (drawings) contained in an application must be presented in the following manner:

8.05.02 – Fully disclose the design

The representation of a design must, taking into account the name of the finished article and any statement, be sufficient to fully disclose the design.

A representation of a design is composed of one or more photographs or reproductions (e.g. drawings).

The application may contain multiple views that show a design from different angles to fully disclose the design. These views may include a: ‘perspective view’; ‘front view’; ‘back view’; ‘right side view’; ‘left side view’; ‘top view’; and ‘bottom view’. Example 3 presents a design applied to an article in seven different views.


Example 3 –Views

Titre : Example 3 - Views - Figure 1.1 to 1.7 - Description : The image shows 7 views of a Jerrycan in different perspectives. The Jerrycan is of a square shape, two caps on the top; a regular size cap on the front and a small on the end, and a finger molded handle in the middle of the two caps. 
Fig. 1.1 Perspective view of the Jerrycan;
Fig. 1.2 Front view of the Jerrycan;
Fig. 1.3 Back view of the Jerrycan;
Fig. 1.4 Right side view of the Jerrycan;
Fig. 1.5 Left side view of the Jerrycan;
Fig. 1.6 Top view of the Jerrycan; and,
Fig. 1.7 Bottom view of the Jerrycan.

Finished article: Jerrycan

Statement:

Fig. 1.1 is a perspective view of the Jerrycan;

Fig. 1.2 is a front view of the Jerrycan;

Fig. 1.3 is a back view of the Jerrycan;

Fig. 1.4 is a right-side view of the Jerrycan;

Fig. 1.5 is a left-side view of the Jerrycan;

Fig. 1.6 is a top view of the Jerrycan; and,

Fig. 1.7 is a bottom view of the Jerrycan.

The Industrial Design Office recommends that the applicant file as many views as necessary in order to fully disclose the features of the design for which protection is sought. However, in some cases, one view may be sufficient to fully disclose the design as illustrated in Example 4.


Example 4 One view is sufficient to disclose the design

Titre : Example 4 – One view is sufficient to disclose the design - Fig 1.1 - Description : Figure 1.1 is a front view of the Display Screen showing the time through both numerical and digital clocks in the middle of the screen. On the right side, there is a weather widget showing a mix of sun and cloud, a calculator, a notepad and a pencil.

Fig. 1.1

Finished article: Display Screen

Statement: The design is limited to the feature of ornament of the Display Screen as illustrated in the reproduction.

Fig. 1.1 is a front view of the Display Screen.

8.05.03 – Quality
8.05.03.01– Insufficient quality of reproductions

The representation of a design must be of sufficient quality to permit the features of the design to be identified clearly and accurately. The Industrial Design Office may request that the applicant submit better-quality reproductions if the original images inadequately illustrate the design. Example 5 illustrates both acceptable and unacceptable reproductions.


Example 5 – Acceptable and unacceptable quality

Titre : Example 5 - Acceptable quality image - Description : The first image shows a Bottle with clearly visible lines and features.

Acceptable

Titre : Example 5 – Unacceptable quality image - Description : The second image shows a Bottle with blurred lines and unclear features.

Unacceptable

Finished article: Bottle

8.05.03.02 – Use of background

To ensure that the design features are clearly and accurately identified in the foreground, applicants should use an appropriate background. Applicants should consider factors such as colouration, contrast and shadow when choosing a background. Example 6 illustrates the correct and incorrect use of these principles.


Example 6 – Acceptable and unacceptable backgrounds

Titre : Example 6 – Acceptable background - Description : The first image shows a red lid on a white background.

Acceptable

Titre : Example 6 – Unacceptable background - Description : The second image shows a red Lid on a red background. On that second image, the visual features are difficult to see.

Unacceptable

Finished Article: Lid

8.05.03.03 – Shadow

Shadowing in a reproduction or photograph is acceptable if the shadows do not interfere with the features of the design. As illustrated in Example 7, the shadows interfere or distort the contours of the article making it difficult to clearly and accurately see the features of the design. In this instance, the Industrial Design Office would issue an objection for lack of clarity.

Example 7 - Unacceptable shadowing in a reproduction or photograph

Titre : Example 7 - Unacceptable shadowing in a reproduction or photograph - Description : The image shows a pair of Earphones with an entangled black cord and shadows. It is difficult to see what is cord and what is shadow.

Unacceptable

 8.05.04 – Combination of photographs and reproductions

Photographs and reproductions can be included in the same application. However, the applicant should ensure that no ambiguity results from this combination. The Industrial Design Office will issue an objection if the features of the design are inconsistent between both the reproduction and photograph of the design.

To illustrate how combining photographs and reproductions in the same application can be inconsistent, Example 8 shows how details are lost between the photograph illustrated in Fig. 1.1 and the reproduction in Fig. 2.1. Note that ridges seen in the photograph are not present in the reproduction. This creates a different visual impression of the design features, which may lead to an objection.

To resolve this objection, an applicant may present the photographs and reproductions as variants of each other, if they comply with the definition of variant designs, as shown in Example 8. Alternatively, the applicant may also ensure that all design features are consistent between the photographs and reproductions.

Example 8 – Combination of photographs and reproductions

Titre : Example 8 – Combination of photographs and reproductions - Description : Fig. 1.1 is a photograph of a light pink coloured Bottle with a grey cap. We can see small ridges around the bottle.

Fig. 1.1

Titre : Example 8 – Combination of photographs and reproductions - Description : Fig. 2.1 is a computer generated image of a light pink coloured bottle with a grey cap. The colours seem slightly different from the ones in figure 1.1 and the ridges can’t be seen.

Fig. 2.1

Finished article: Bottle

Statement: The design is limited to the feature of shape and configuration of the Bottle as illustrated in the reproduction.

Fig. 1.1 is a front view of the first variant of the Bottle in a photograph; and,

Fig. 2.1 is a front view of the second variant of the Bottle in a reproduction.

8.05.05 – Drawing techniques
8.05.05.01 – Shading

Shading the surface of an article can be used to illustrate its shape provided that it does not distort or obscure the design. Shading should be shown consistently throughout the reproductions and should be restricted to the design portions of the article. Example 9, illustrates an acceptable use of shading. Please note that no shading is added to the feet of the Stool as they do not form part of the design.


Example 9 Shading

Titre : Example 9 – Shading ­- fig. 1.1 - Description : The image shows a square Stool with the four corners shaped as semi-circular towers and the four openings between the towers are arc shaped. The shading is shown by using fine lines applied to the surface of the Stool.

Fig. 1.1

Finished article: Stool

Statement: The design is limited to the features of shape and configuration of the Stool shown in the representation.

Fig. 1.1 is a perspective view of the Stool.

8.05.05.02 – Transparency and translucency

Transparency can be illustrated by the use of thin diagonal shade lines. Portions of the design and article that would be visible through the transparent section should be shown. Example 10, a Butter Dish, illustrates an acceptable use of transparency.

Example 10 Transparency

Titre : Example 10 – Transparency - fig 1.1 - Description : Figure 1.1 shows a transparent Butter Dish with two parts: a rectangular saucer and a cover the size of a butter brick. You can see through both parts and fine diagonal lines have been included to indicate transparency.

Fig. 1.1

Finished article: Butter Dish

Statement: The design is limited to the feature of shape of the Butter Dish as shown in the reproduction.

Fig. 1.1 is a perspective view of the Butter Dish.

Translucency can be shown with thin diagonal shade lines and light shading throughout the translucent area. Portions of the article that are visible through the translucent section should be shown. Example 11 illustrates an acceptable use of translucency. Optionally, a descriptive statement such as: “The area indicated by thin diagonal lines and light shading represent translucency” may be added to indicate the presence of translucency in the reproduction.


Example 11 Translucency

Titre : Example 11 – Translucency - Description : Figure 1.1 shows a representation of a translucent Butter Dish with two parts: a rectangular saucer and cover the size of a butter brick. It is possible to see through, but the two parts are not completely transparent. Light shading as well as fine diagonal lines are used to indicate translucency.

Fig. 1.1

Finished article: Butter Dish

Statement: The design consists of the features of shape and configuration of the Butter Dish as shown in the reproduction. The area indicated by thin diagonal lines and light shading represent translucency.

Fig. 1.1 is a perspective view of the Butter Dish.

8.05.05.03 – Indefinite length and/or width and variable length in a portion of the article

To illustrate articles of indefinite length and/or width, the reproductions should show break lines in the article’s length and/or width. It should be obvious that the break lines are for illustrating a break in the article and do not form part of the design. To ensure clarity, the applicant may add a statement which indicates that indefinite length and/or width is shown. Break lines may be shown with double sinusoidal lines as illustrated in Example 12, sharp jagged lines as illustrated in Example 13, or a pair of angled parallel lines broken occasionally by a zigzag as illustrated in Example 14.

Exceptionally, articles of indefinite length and width with a repeating surface pattern can be illustrated with dotted or broken lines around the pattern to be repeated as illustrated in Example 17.


Example 12 Double sinusoidal lines to illustrate an article of indefinite length

Titre : Example 12 – Double sinusoidal lines to illustrate an article of indefinite length - Figure 1.1 - Description : Figure 1.1 shows a Decorative Moulding with a rectangular shaped lower part and decorated thinner upper part. The Decorative Moulding is cut by sinusoidal line in the middle to illustrate indefinite length.

Fig. 1.1

Finished article: Decorative Moulding

Statement: The design is limited to the features of shape and configuration of the entire Decorative Moulding as shown in the reproduction.

Fig. 1.1 is a perspective view of the Decorative Moulding of indefinite length indicated by the double sinusoidal lines.

8.05.05.04 – Articles of indefinite length or width with a constant cross-section

Regardless of where an article is cut, the cross-section should remain identical and there should be no surface pattern and no three-dimensional (3D) features. Extrusions for mouldings or windows as illustrated in Examples 13 and 14 below, illustrate reproductions that are accepted by the Industrial Design Office.

Example 13 – Sharp jagged lines

Titre : Example 13 – Sharp jagged lines - Figure 1.1 - Description : Figure 1.1 shows an Extrusion of rectangular shape. Two parallel sharp jagged lines cuts the Extrusion in half to show that the article is of indefinite length.

Fig. 1.1

Finished article: Extrusion

Statement: The design is limited to the features of shape of the Extrusion shown in the reproduction. The sharp jagged lines on the reproduction indicate that the article is of indefinite length.

Fig. 1.1 is a side view of the Extrusion.

Example 14 Parallel lines broken by a zigzag

Titre : Example 14 – Parallel lines broken by a zigzag - Figure 1.1 - Description : Figure 1.1 shows a Window Extrusion multiple indentations and cavities. The Window Extrusion is cut in half by two parallel lines broken by a zigzag representing an indefinite length.

Fig. 1.1

Finished article: Window Extrusion

Statement: The design is limited to the features of shape and configuration of the Window Extrusion of indefinite length. The parallel lines broken by a zigzag in the reproduction indicate that the article is of indefinite length.

Fig. 1.1 is a perspective view of the front side and top of the Window Extrusion.

8.05.05.05 – Articles of indefinite length or width with a repeating surface pattern

This example refers to a design that has a repeating pattern on the surface of the article and does not affect the article’s cross-section. A statement referring to indefinite length or width should be included in the application. The statement should also indicate that the pattern repeats at regular intervals throughout the length or width of the article. Example 15 shows an acceptable method of illustrating an article of indefinite length with a repeating surface pattern.

Example 15 Repeating surface pattern

Titre : Example 15 – Repeating surface pattern - Figure 1.1 - Description : Figure 1.1 shows a Ribbon with a repeating pattern showing a sun. On the right side, the Ribbon is cut in half by two parallel lines broken by a zigzag in order to represent the indefinite length of the Ribbon.

Fig. 1.1

Finished article: Ribbon

Statement: The design is limited to the feature of pattern as shown on the Ribbon. The pattern shown on the surface repeats throughout the length of the Ribbon of indefinite length.

Fig. 1.1 is a front view of the Ribbon of indefinite length.

8.05.05.06 – Articles of indefinite length or width with repeating 3D features

This example refers to a design that has constant 3D features, which repeat at regular intervals throughout the article’s length and width. A statement referring to indefinite length or width should be included in the application. The statement should also indicate that such features repeat consistently and at regular intervals throughout the length or width of the article.

The combined reproduction and statement in Example 16 would be accepted by the Industrial Design Office for this type of article.

Example 16 Repeating 3D features

Titre : Example 16 – Repeating 3D features - Figure 1.1 - Description : The image shows a Backpack Hanging Rack. The Rack has three parts, a top and bottom oblique sides linked together by an horizontal middle part. Multiple hooks for the backpacks are fixed to the middle part. The finished article is cut by zigzag line showing the indefinite length.

Fig. 1.1

Finished article: Backpack Hanging Rack

Statement: The design is limited to the features of shape and configuration of the Backpack Hanging Rack. The design is of indefinite length as shown in the reproduction. The three-dimensional features on the front surface of the article repeat consistently and at regular intervals throughout the length of the article.

Fig. 1.1 is a perspective view of the Backpack Hanging Rack.

8.05.05.07 – Articles of indefinite length and width with a repeating surface pattern

Articles having a repeating surface pattern of both indefinite length and width may be illustrated by dotted or broken lines around the pattern to be repeated. A statement should also be included that refers to the repeat pattern and the indefinite length and width. The combined reproduction and statement in Example 17 below would be considered acceptable by the Industrial Design Office.


Example 17 Repeating surface pattern

Titre : Example 17 – Repeating surface pattern - Figure 1.1 - Description : The image shows a Paper Towel with a pattern showing symmetrical squares boxes on the entire surface. Five vertical squares boxes are showing the image of a four-leave clover. A second column of five blank square boxes of the same size follows. This pattern repeats. A small circle sits at one corner, between every square box.

Fig. 1.1

Finished article: Paper Towel

Statement: The design is limited to the pattern on the Paper Towel. The design is of indefinite length and width as shown by the broken lines around the perimeter of the reproduction. The pattern shown on the surface repeats throughout the length and width of the Paper Towel.

Fig. 1.1 is a front view of the Paper Towel.

8.05.05.08 – Articles of variable length in a portion

An article having a portion of it that is of varying length can be illustrated through the use of break lines in the relevant portion. A statement should also be included indicating that the portion is of variable length. Example 18 includes a reproduction and statement that accurately reflects variable length.

Example 18 Variable length in a portion

Titre : Example 18 – Variable length in a portion - Figure 1.1 - Description : The image shows a Rake. The handle portion of the Rake in cut in half by two parallel lines broken by a zigzag to illustrate the variable length of the handle.

Fig. 1.1

Finished article: Rake

Statement: The design is limited to the features of shape and configuration of the Rake as shown in the reproduction. The handle portion of the Rake varies in length within the breaklines as illustrated in the reproduction.

Fig. 1.1 is a front view of the Rake.

8.05.05.09 – Variable length in a portion that has repeating surface pattern

An article having a repeating surface pattern and variable length in only a portion of the article can be illustrated with break lines in the relevant portion. A statement indicating that the pattern repeats throughout the variable length of the portion should also be included.

8.05.05.10 – Variable length in a portion that has repeating 3D features

An article having repeating 3D features in only a portion of the article can be illustrated with break lines in the relevant portion. A statement indicating that the features repeat at regular intervals throughout the variable length of the portion should also be included. See Example 19.

Example 19 Portion of variable length having 3D features

Titre : Example 19 – Portion of Variable length having 3D features - Figure 1.1 - Description : The image shows a Paper Towel Holder with 3D features on the bar portion. Two parallel lines cuts the bar portion in half in order to illustrate the variable length of that part.

Fig. 1.1

Finished article: Paper Towel Holder

Statement: The design is limited to the features of shape, configuration and pattern of the Paper Towel Holder as shown in the reproduction. The 3D-elements repeat consistently and at regular intervals throughout the variable length of the bar portion of the Paper Towel Holder.

 Fig. 1.1 is a front perspective view of the Paper Towel Holder.

8.05.05.11 – Cross-sectional views

A cross-sectional view may be included in order to better disclose exterior features that are not adequately represented in the conventional views. Internal features that are not visible in the completely assembled article should not be shown.

Method to illustrate a cross-sectional view (Example 20):

Example 20 Cross-sectional view

Titre : Example 20 – Cross-sectional view - Figure 1.1 - Description : The image shows a Hockey Puck. 

Figure 1.1 shows a perspective view of a circular Hockey Puck. The interior portion of the Hockey Puck is empty.

Fig. 1.1

Titre : Example 20 – Cross-sectional view - Figure 1.2 - Description : The image shows a Hockey Puck. 
Figure 1.2 shows a top plan view of the Hockey Puck. You can see that the inside is empty. A broken line goes across the image with a reference to 1.3 marked on both sides of the line to illustrate a cross-sectional cut.

Fig. 1.2

Titre : Example 20 – Cross-sectional view - Figure 1.3 - Description : The image shows a Hockey Puck. 
Figure 1.3 shows a cross sectional view of the hockey puck taken along the line 1.3 of the previous figure 1.2.

Fig. 1.3

Finished article: Hockey Puck

Statement: The design is limited to the features of shape, configuration and pattern of the Hockey Puck as shown in the reproductions.

Fig. 1.1 is a perspective view of a Hockey Puck;

Fig. 1.2 is a top plan view thereof; and,

Fig. 1.3 is a cross-sectional view thereof, taken along lines 1.3-1.3 of Fig. 1.2.

8.05.05.12 – Enlarged fragmentary or magnified view

An enlarged or magnified view of a portion of the design, also known as an “enlarged fragmentary view” or “magnified view” may be included to show a portion of the design on a larger scale in order to better disclose small details.

Example 21 provides guidance on the acceptable method to illustrate an enlarged fragmentary view:


Example 21 Enlarged fragmentary or magnified view

Titre : Example 21 – Enlarged fragmentary or magnified view - Figure 1.1 - Description : The image shows a Test Tube with Ergonomic Handle.

Figure 1.1 shows a front perspective view of the Test Tube. The Tube is elongated and has an opening at the top and is rounded at the bottom. The Tube has an ergonomic rectangular handle with an oblique part at the top. The image also shows a circle which focuses on the top part of the handle and includes a reference to figure 1.2.

 Fig 1.1

Titre : Example 21 – Enlarged fragmentary or magnified view - Figure 1.2 - Description : The image shows a Test Tube with Ergonomic Handle.

Figure 1.2 is an enlarged fragmentary view of the content shown in the circle of figure 1.1 (the top part of the handle).

Fig 1.2

Finished article: Test Tube with Ergonomic Handle

Statement: The design is limited to the visual features of shape and configuration of the Test Tube with Ergonomic Handle as shown in the reproductions.

Fig. 1.1 is a front perspective view of the Test Tube with Ergonomic Handle; and,

Fig. 1.2 is an enlarged fragmentary view of Fig. 1.1.

8.05.05.13 – Environment views

One or more environment views may be included to show the article in the context of its surroundings. The environment is subject matter that is not part of the finished article or design.

Method to illustrate an environmental view (Example 22):

Example 22 Environmental view

Titre : Example 22 – Environmental View - Figure 1.1 - Description : Figure 1.1 shows a perspective view of a Faucet and a sink. The Faucet has a circular nozzle and a handle on the right side of the base. The sink is represented in broken lines to illustrate that it does not form part of the claimed design and is part of the environment.

Fig. 1.1

Titre : Example 22 – Environmental View - Figure 1.2 - Description : Figure 1.2 shows a perspective view of the Faucet only (without the sink). The Faucet has a circular nozzle and a handle on the right side of the base.

Fig. 1.2

Finished article: Faucet

Statement: The design is limited to the features of shape and configuration of the Faucet as shown in the reproductions. The dotted lines represent environment only, and do not form part of the design.

Fig. 1.1 is a perspective view of the Faucet showing the environment; and,

Fig. 1.2 is a perspective view of the Faucet.

8.05.05.14 – Contrasting tones

It is acceptable to use shading techniques to show contrasting tones provided they do not distort or hide the design. Contrasting tones should be restricted to the design portions of the article only as illustrated in Example 23.

Example 23 Contrasting tones

Titre : Example 23 – Contrasting tones - Figure 1.1 - Description : Figure 1.1 shows a perspective view of a Toy Cube with grey colours. The front face shows four lozenges with contrasting tones. Some are dark gray, others are lighter gray.

Fig. 1.1

Finished article: Toy Cube

Statement: The design is limited to the features of shape, configuration and ornament of the Toy Cube shown in the reproduction.

 Fig. 1.1 is a perspective view of the Toy Cube.

8.05.05.15 – Open and closed positions

Views of the article in the open and closed positions may be included to reveal design features provided that the article is normally seen or used in those positions. It is recommended that the figure reference in the statement indicates the different positions shown, as illustrated in Example 24.

Example 24 Open and closed positions

Titre : Example 24 – Open and closed positions - Figure 1.1 - Description : Figure1.1 shows a perspective view of the Pill Container with the lid in an open position. Shading lines are displayed all across the article and a small button sits on the front side of the container to open or keep the lid closed.

Fig 1.1

Titre : Example 24 – Open and closed positions - Figure 1.2 - Description : Figure1.2 shows a perspective view of the Pill Container with the same lid in a closed position.

Fig 1.2

Finished article: Pill Container

Statement: The design is limited to the features of shape, configuration and ornament of the Pill Container as shown in the reproductions.

Fig. 1.1 is a perspective view of the Pill Container with the lid in an open position; and,

Fig. 1.2 is a perspective view of the Pill Container with the lid in the closed position.

8.05.05.16 – Extended/retracted views

Views of the article in extended and retracted positions may be included in an application provided that the article is normally seen and used in those positions. It is recommended that the figure reference indicate the different positions shown as illustrated in Example 25.

Example 25 Extended and retracted views

 

Titre : Example 25 – Extended and retracted views - Figure 1.1 - Description : The Telescoping Container Cap consist of three parts on top of each other where the bottom part is the widest and the top part is smallest such that container can extend and retract. 

Figure 1.1 shows a perspective view of the Telescoping Container Cap in a fully extended position where all three parts are visible.

Fig. 1.1

Titre : Example 25 – Extended and retracted views - Figure 1.2 - Description : The Telescoping Container Cap consist of three parts on top of each other where the bottom part is the widest and the top part is smallest such that container can extend and retract. 

Figure 1.2 shows a perspective view of the Telescoping Container Cap in a semi-extended position where the top part is retracted.

Fig. 1.2

Titre : Example 25 – Extended and retracted views - Figure 1.3 - Description : The Telescoping Container Cap consist of three parts on top of each other where the bottom part is the widest and the top part is smallest such that container can extend and retract.

Figure 1.3 shows a perspective view of the Telescoping Container Cap in a fully retracted position where the top two parts are retracted and only the bottom part is visible.

Fig 1.3

 

Finished article: Telescoping Container Cap

Statement: The design is limited to the features of shape and configuration of the entire Telescoping Container Cap as shown in the reproductions.

Fig. 1.1 is a perspective view of the Telescoping Container Cap in a fully extended

position;

Fig. 1.2 is a perspective view of the Telescoping Container Cap in a semi-extended/retracted position; and,

Fig. 1.3 is a perspective view of the Telescoping Container Cap in a fully retracted position.

8.05.05.17 – Exploded views

A multi-component article should be shown fully assembled. An exploded view may also be included provided that the article is seen or used in that position. In exploded views, it should be clear how the components join together. Example 26 illustrates an acceptable exploded view.

Example 26 Exploded view for multi-component articles

Titre : Example 26 – Exploded view for multi-component articles - Figure 1.1 - Description : Figure 1.1 shows a perspective view of a Food Processor. The image shows a container of cylindrical shape with a cap that looks like an inverted funnel.

Fig. 1.1

Titre : Example 26 – Exploded view for multi-component articles - Figure 1.2 - Description : Figure 1.2 shows an exploded view of the Food Processor shown in figure 1.1. The image shows all the separate parts of the Food Processor separately. It consists of, respectively, the cylindrical container, the blade stick and the inverted funnel cap.

Fig 1.2

Finished article: Food Processor

Statement:

Fig. 1.1 is a perspective view of the Food Processor; and,

Fig. 1.2 is an exploded view of the Food Processor of Fig. 1.1.

8.05.06 – Colour

Colour may form part of a design as a feature of pattern or ornament. As such, colour photographs or reproductions may be submitted in an application. A descriptive statement referencing colour may also accompany colour reproductions. Any reference to colour in a descriptive statement must be clear and unambiguous. For example, the adjective "blue" is acceptable; "blue-ish" is not. Alternately, widely recognized colour systems may be used to describe the colours. In this case, applicants should include a descriptive statement of the colour and refer to the applicable colour system.

The Industrial Design Office recommends filing colour designs using the e-filing application rather than through a paper application as scanning the paper application may lead to inaccurate reproduction of the colour.

To ensure accurate colour claims, the applicant may consider using a colour identification system. While the Industrial Design Office does not endorse or recommend a particular colour identification system, any system used should be easy to identify and be reproduced by the general public. If the colour system is the subject of a registered trade-mark, it should be identified using uppercase letters and should include a statement that it is a registered trade-mark such as: “The blue colour shown in the reproductions is PANTONE 3538C. *PANTONE is a registered trade-mark." Example 27 is an acceptable use of colour in an application.

As stated in section 8.05.05.01 of this Manual, it is unacceptable to show shading in the non-design portions of an article that have been defined by stippled lines. The Industrial Design Office applies the same principle for colour shown in non-design portions of an article and will issue an objection if colour is included in non-design portions.

Example 27 Colour in the reproductions

Titre : Example 27 – Colour in the reproductions - Figure 1.1 - Description : Figure 1.1 shows a front view of the ventral side of a Glove with two different colours. The cuff of the glove has a specific blue colour called PANTONE* Blue 3538C. The rest of the Glove is shown in a specific dark grey colour called PANTONE* Grey 425C. *PANTONE is a registered trade-mark.

Fig. 1.1

Finished article: Glove

Statement:

Fig. 1.1 is a front view of the Glove illustrating a ventral side of the glove having a PANTONE* Blue 3538C cuff. The rest of the Glove is shown in PANTONE* Grey 425C. *PANTONE is a registered trade-mark.

8.05.07 – Electronic Icons

The design of an electronic icon can be shown applied to a finished article (Fig. 1.1 of Example 28) or in isolation (Fig 1.2). The name of the finished article in respect of which the design is to be registered should always be identified in the application as illustrated in Example 28.

Example 28 Electronic Icon

Titre : Example 28 – Electronic Icon - Figure 1.1 - Description : Figure 1.1 shows a front view of the Display Screen in dotted lines onto which is shown an Electronic Icon. The electronic icon indicates the weather by illustrating a blue cloud onto which there are a yellow lightning bolt, a yellow crescent moon and a yellow sun.

Fig. 1.1

Titre : Example 28 – Electronic Icon - Figure 1.2 - Description : Figure 1.2 shows a front view of the same Electronic Icon, but shown alone without the Display Screen.

Fig. 1.2

Finished article: Display Screen with Electronic Icon

Statement:

Fig. 1.1 is a front view of the Display Screen with Electronic Icon; and,

Fig. 1.2 is a view of the Electronic Icon.

8.05.08 – Computer-generated animated designs

The Industrial Design Office accepts as registrable subject matter computer-generated animated designs that change in appearance while viewing. The reproductions submitted in the application will be viewed as a sequence of frames that define the computer-generated animated design.

As illustrated in Example 29, it is strongly recommended that a figure reference accompany an application for the registration of an animated design. When included, the figure reference should read as “Figure 1.1 – first frame of the sequence,” “Figure 1.2 – second frame of the sequence,” etc. If there are no figure references and there is no descriptive statement of the sequence, the Industrial Design Office will interpret the order in which the figures appear as defining the sequence of the design for which protection is sought. The individual frames need not include substantially similar content to one another, as they are not assessed independently from their sequential arrangement.


Example 29 Computer-generated animated designs

Titre : Example 29 – Computer-generated animated designs - Figure 1.1 - Description : This image shows a Thermostat Display Screen consisting of a double circle inside which a colour is displayed in a progressive manner to illustrate the changing temperature. 

Figure 1.1 is a first frame of the sequence of the first variant showing a dark red colour on a small section between the two circles.
.

Fig. 1.1

Titre : Example 29 – Computer-generated animated designs - Figure 1.2 - Description : This image shows a Thermostat Display Screen consisting of a double circle inside which a colour is displayed in a progressive manner to illustrate the changing temperature. 

Figure 1.2 is a second frame of the sequence of the first variant showing a dark red colour on almost half of the surface between the two circles.

Fig. 1.2

Titre : Example 29 – Computer-generated animated designs - Figure 1.3 - Description : This image shows a Thermostat Display Screen consisting of a double circle inside which a colour is displayed in a progressive manner to illustrate the changing temperature. 

Figure 1.3 is a third frame of the sequence of the first variant showing a dark red colour on almost three quarter of the surface between the two circles.

Fig. 1.3

Titre : Example 29 – Computer-generated animated designs - Figure 2.1 - Description : This image shows a Thermostat Display Screen consisting of a double circle inside which a colour is displayed in a progressive manner to illustrate the changing temperature. 

Figure 2.1 is a first frame of the sequence of the second variant showing a light blue colour on a small section between the two circles.

Fig. 2.1

Titre : Example 29 – Computer-generated animated designs - Figure 2.2 - Description : This image shows a Thermostat Display Screen consisting of a double circle inside which a colour is displayed in a progressive manner to illustrate the changing temperature. 

Figure 2.2 is a second frame of the sequence of the second variant showing a light blue colour on almost three quarter of the surface between the two circles.

Fig. 2.2

Titre : Example 29 – Computer-generated animated designs - Figure 2.3 - Description : This image shows a Thermostat Display Screen consisting of a double circle inside which a colour is displayed in a progressive manner to illustrate the changing temperature. 

Figure 2.3 is a third frame of the sequence of the second variant showing a light blue colour on almost three quarter of the surface between the two circles.

Fig. 2.3

Finished article: Thermostat Display Screen

Statement: The design is limited to the feature of ornament applied to a Thermostat Display Screen as shown in the reproductions.

Fig. 1.1 is a first frame of the sequence of the first variant;

Fig. 1.2 is a second frame of the sequence of the first variant;

Fig. 1.3 is a third frame of the sequence of the first variant;

Fig. 2.1 is a first frame of the sequence of the second variant;

Fig. 2.2 is a second frame of the sequence of the second variant; and,

Fig. 2.3 is a third frame of the sequence of the second variant.

Relevant provision(s): 9(b), 14(a) to (d), 15 IDR.

8.06 – Application deemed to relate to all features shown

An application is deemed to relate to all of the features of “shape”, “configuration”, “pattern” and “ornament” shown in the representation of the design unless an exception described below applies.

8.06.01 – Statement of limitation

An applicant may use a statement in the application to limit some of the features from applying. For example, an acceptable statement of limitation would be: “The design is limited to the features of shape and configuration.” The statement must clearly describe which features are claimed and must not create alternatives that may lead to ambiguity as to the scope of the design. For example, the following statements would not be acceptable: “The design is the visual features of the entire article shown in the reproductions, whether those features are features of one of shape, configuration, ornament or pattern or are a combination of any of these features.”

8.06.02 – Design applied to part of the article
8.06.02.01 – Statement to limit the design to part of the article

A statement may also indicate that the application relates to only some or all of the features of shape, configuration, pattern or ornament of a part of the finished article. As Illustrated in Example 30, the statement is used limit the features of the design and where the design is applied to the article: “The design is limited to the features of shape and configuration of the Table top. The legs do not form part of the design.”

Example 30 – Statement of limitation for part of the article

Titre : Example 30 - Statement of limitation for part of the article - Figure 1.1 - Description : The image shows a perspective view of a rectangular shaped Table with four legs. Diagonal shading lines are shown on the Table.

Fig. 1.1

Finished article: Table

Statement: The design is limited to the features of shape and configuration applied to the Table. The legs do not form part of the design.

Fig. 1.1 is a perspective view of the Table.

8.06.02.02 – Dotted or broken lines to limit the design to part of the article

A design may also be limited to parts of an article through the use of dotted or broken lines. In Example 31, the design portion is limited to the frame of the glasses. The features applied to the lenses do not form part of the design as they are illustrated using broken lines. It is unnecessary to include a statement in the application indicating that the broken (or dotted) lines do not form part of the design as this is deemed by the Regulations.

Example 31 – Features in dotted or broken lines

Titre : Example 31 – Features in dotted or broken lines - Figure 1.1 - Description : The image shows a front view of the Glasses, where the frame is represented in solid lines. The Glasses themselves are shown in broken lines to illustrate that they do not form part of the design.

Fig. 1.1

Finished article: Glasses

Statement:

Fig. 1.1 is a front elevated view of the Glasses.

If the reproduction of the design contains dotted or broken lines illustrating elements that are meant to form part of the design such as stitching on a garment, a statement should be included in the application to ensure that the dotted or broken lines are interpreted as stitching rather than a method of disclaiming features of the design (see Example 32).

Example 32 – Statement required when stitching is part of the design

Titre : Example 32 – Statement required when stitching is part of the design - Figure 1.1 - Description : The image shows the front view of a Shirt in solid lines. The design also shows six vertical broken lines running from top to bottom, three on each side of the neck. These broken lines constitute stitching and they form part of the design.

Fig. 1.1

Finished article: Shirt

Statement: The broken lines shown in the reproduction constitute stitching and are part of the design.

Fig. 1.1 is a front view of the design.

8.06.02.03 – Colouring to limit the design to part of the article

Colouring can also be used to limit the design. Contrasting colour tones can be used to obscure features that do not form part of the design. When using colouring, the features for which protection is sought should be clearly visible, whereas the disclaimed features should be represented in a different tone so they appear blurred or imperceptible. Example 33 shows an acceptable use of colouring to disclaim portions of the article. If it is not evident that the purpose of the colouring is to indicate that the application does not relate to these features, a statement to this effect should be included in the application. To make it evident that the features do not form part of the design, the colouring can be extended to the background as illustrated.

Example 33 – Use of colouring to limit the design

Titre : Example 33 – Use of colouring to limit the design - Figure 1.1 - Description : Figure 1.1 shows a front view of a Car where the front part of the Car shows details of the design. The rest of the Car is coloured in dark blue so the details appear blurred or imperceptible. The colour is used to limit the design to the front part of the Car.

Fig. 1.1

Titre : Example 33 – Use of colouring to limit the design - Figure 1.2 - Description : Figure 1.2 shows a perspective view of a Car where the front part of the Car shows details of the design. The rest of the Car is coloured in dark blue so the details appear blurred or imperceptible. The colour is used to limit the design to the front part of the car.

Fig. 1.2

Titre : Example 33 – Use of colouring to limit the design - Figure 1.3 - Description : Figure 1.3 shows a right-side view of a Car where the front part of the Car shows details of the design. The rest of the Car is coloured in dark blue so the details appear blurred or imperceptible. The colour is used to limit the design to the front part of the car.

Fig. 1.3

Finished article: Car

Statement:

Fig. 1.1 is a front view of the car;

Fig. 1.2 is a left perspective view of the car; and,

Fig. 1.3 is a right-side view of the car.

8.06.02.04 – Blurring to limit the design to part of the article

Part of an article can be blurred in the representation so that some of features are vague or imperceptible creating a contrast between the design and non-design portions of the article. Example 34 shows an acceptable use of blurring, where the claimed front end of the car is shown clearly and the remainder of the car is blurred. If it is not evident that the purpose of the blurring is to indicate that the application does not relate to blurred features, a statement should be included in the application.

Example 34 – Use of blurring to limit the design

Titre : Example 34 – Use of blurring to limit the design - Figure 1.1 - Description : Figure 1.1 shows a front view of a Car where the front part of the Car shows details of the design and the rest of the Car is blurred. The blurring is used to limit the design to the front part of the Car.

Fig. 1.1

Titre : Example 34 – Use of blurring to limit the design - Figure 1.2 - Description : Figure 1.2 shows a perspective view of a Car where the front part of the Car shows details of the design and the rest of the Car is blurred. The blurring is used to limit the design to the front part of the Car.

Fig. 1.2

Titre : Example 34 – Use of blurring to limit the design - Figure 1.3 - Description : Figure.1.3 shows a left-side view of a Car where the front part of the Car shows details of the design and the rest of the Car is blurred. The blurring is used to limit the design to the front part of the Car.

Fig. 1.3

Finished article: Car

Statement:

Fig. 1.1 is a front view of the car;

Fig. 1.2 is a left perspective view of the car; and,

Fig. 1.3 is a left-side view of the car.

8.06.02.05 – Boundary line to limit the design to part of the article

Although the above options handle the majority of cases, there are exceptions that might warrant using an additional means to illustrate the distinction between design and non-design portions of the article. The Industrial Design Office will accept the use of boundary lines to define a boundary between the design and non-design portions of the article where the use of a statement of limitation, broken or dotted lines, colouring or blurring alone do not clearly show the design as applied to the article. 

It should be clear by an accompanying statement that the boundary line is used to define design and non-design portions of an article. Due to the risk of including more than just the design within the boundary, boundaries should be used carefully in reproductions/photographs. Example 35 illustrates four types of acceptable boundary lines – using a dot-dash, coloured (red in this example), dotted and broken. Please note that other types of boundary lines are acceptable as long as their purpose is clearly defined.

Example 35 Acceptable use of boundary lines

Titre : Example 35 – Acceptable use of boundary lines - Figure 1 - Description : Figure1 shows a front view of a Shoe Sole with multiple design features. The features shown in the arch-part of the Shoe Sole are surrounded by a dot-dash boundary line to illustrate that the design is limited to the features within its boundary.

Fig. 1

Titre : Example 35 – Acceptable use of boundary lines - Figure 2 - Description : Figure 2 shows a front view of a Shoe Sole with multiple design features. The features shown in the arch-part of the Shoe Sole are surrounded by a red coloured boundary line to illustrate that the design is limited to the features within its boundary.

Fig. 2

Titre : Example 35 – Acceptable use of boundary lines - Figure 3 - Description : Figure 3 shows a front view of a Shoe Sole with multiple design features. The features shown in the arch-part of the Shoe Sole are surrounded by a dotted boundary line to illustrate that the design is limited to the features within its boundary.

Fig. 3

Titre : Example 35 – Acceptable use of boundary lines - Figure 4 - Description : Figure 4 shows a front view of a Shoe Sole with multiple design features. The features shown in the arch-part of the Shoe Sole are surrounded by a broken boundary line to illustrate that the design is limited to the features within its boundary.

Fig. 4

Finished article: Shoe Sole

Statement: The dot-dash (Fig. 1), coloured red (Fig. 2), dotted (Fig. 3) and broken (Fig. 4)  boundary line does not form part of the design and is included to indicate that the design is limited to the features within its boundary.

8.06.03 – Optional descriptive statement

The applicant may include in the application a brief descriptive statement of the representation or features of the design. This descriptive statement must not refer to utilitarian function or a method or principle of manufacture or construction. It is acceptable to include in that statement an indication that a particular feature is considered to be an important feature of the design. For example, “The most significant feature of the design is the appearance of the rose at the base of the handle.” In that case, any feature of the design that is referred to must be visible in the photographs or reproductions.

Relevant provision(s): 17(1) to (4), 18 IDR.

8.07 – Priority

8.07.01 – Request for priority

An applicant can take advantage of the priority of a previously filed industrial design application by filing an application for the registration of an industrial design in Canada and by making a request for priority accompanied by the required information. Provided that the request for priority is made correctly, the priority date of the design will be used for the purpose of novelty assessment, instead of the filing date of the application.

To illustrate, an applicant may file an application for the registration of a design in Canada on May 31, 2017, and include a request for priority in the application indicating that an application for registration of the same design was previously filed in the United States of America, on January 10, 2017. Provided that the request for priority is made correctly, the Industrial Design Office would use January 10, 2017, as the date to assess novelty of the design. Any conflicting designs with a priority date that is after January 10, 2017, would generally be refused registration.

8.07.02 – Priority request requirements

An applicant can make a request for priority either in the application or in a separate document. The request for priority must include the filing date, the name of the country or office where the previously regularly filed application was filed and, while not mandatory, its application number. For the purposes of identifying the country or office, two-letter alphabetic codes may be used provided they are based on WIPO’s standard ST.3, the recommended standard on two-letter codes for the representation of states, other entities and intergovernmental organizations.

If the request does not include the filing date or the name of the country or office where the previously regularly filed application was filed, the priority request will be deemed never to have been filed.

The filing date of the previously regularly filed application cannot be the same date as the filing date in Canada; if it is, the request for priority will be deemed never to have been filed.

The design disclosed in the previously regularly filed application must be the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether the design is considered to be the same.

Any request for priority in respect of a particular variant must be based on an application that fully discloses that same variant.

Any request for priority in respect of a particular design disclosed in the environment which could be made the subject of a divisional application must be based on an application that fully discloses that same design.

When filing an application, it is recommended to include all requests for priority for all subject matter disclosed in the application (including in the environment). Note that in all cases, the priority claim must be for the same design and fully disclosed in the previously regularly filed application.

If these requirements are met, the Industrial Design Office will assess the novelty of the design based on the date of priority, rather than based on the Canadian filing date.

Specific rules apply to requests for priority in respect of Hague applications. See section 30 of this Manual for more detail.

8.07.02.01 – Deadline

The Industrial Design Office must receive any request for priority, including all of the required information before the earlier of:

8.07.02.02 – Countries

The countries in or for which a previously filed application may serve as the basis for priority are:

8.07.03 – Withdrawal of a request for priority

An applicant may withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications.

8.07.04 – Impact on the date on which an application is made available to the public

Where a request for priority is made in respect of an application, the earliest filing date of the priority application(s) will affect the date on which an application is made available to the public. If a request for priority is withdrawn at least two months before the date on which an application would have been made available to the public, the publication date will be recalculated without taking into account that priority request.

8.07.05 – Correction to a request for priority

An error in the filing date, the name of the country or office of filing or the number of a previously regularly filed application in respect of which a priority claim has been made may only be corrected before the design is registered. The following two exceptions apply to this rule.

8.07.06 – Exceptions

If an application has been made available to the public prior to registration, the Industrial Design Office may correct an error in the name of the country or office of filing only if it is obvious from the documents in the Industrial Design Office at the time the application is made public.

The Industrial Design Office will not correct an error in the filing date of a previously regularly filed application if more than six months have passed since the filing date of the pending application in Canada.

8.07.07 – Non-application to Hague applications

An applicant must contact the International Bureau of WIPO to correct any information relating to their priority claim in an international application under the Hague Agreement or to a divisional application resulting from a Hague application. The Industrial Design Office will disregard any request it receives to make a correction to a Hague applications priority claim or to a divisional application resulting from a Hague application.

8.07.08 – Request for priority documents

If the priority date is relevant in order to assess novelty under section 8.2 of the Act, the Industrial Design Office will request that the applicant either submit a certified copy of the relevant priority documents or make a copy of the previously regularly filed application available on WIPO’s Digital Access Service.

The applicant must provide the requested information no later than three months after the date of the notice. This deadline can be extended by six months upon request. Only one six-month extension is available.

8.07.08.01 – WIPO’s Digital Access Service

WIPO’s Digital Access Service is an electronic digital library allowing priority documents to be securely exchanged between participating IPOs. The Industrial Design Office will treat any priority document furnished to it via the WIPO service as if the document had been filed directly with the Industrial Design Office.

As indicated in the previous section, a priority document filed in a participating IPO may be made available to the Industrial Design Office through WIPO’s Digital Access Service in order to comply with a request for priority documents. In that case, the applicant must provide the number and the filing date of the previously regularly filed application along with the access code required to retrieve the priority document. If that information is not provided or incomplete, the applicant will be considered not to have complied with the request to provide priority documents.

8.07.08.02 – Translation

If the previously regularly filed application is in a language other than French or English, the Industrial Design Office will require a translation. The applicant must provide the translation along with the requested priority documents. If the translation is not provided, the applicant will be considered not to have complied with the request for priority documents.

If the Industrial Design Office believes the translation is inaccurate, it may by notice request that the applicant:

The applicant must provide the requested statement or new translation no later than three months after the date of the notice. This deadline can be extended by six months upon request. Only one six-month extension is available.

8.07.08.03 – Consequence for non-compliance

If an applicant does not comply with the request to provide the priority documents and a translation by either the initial deadline, or the extension if applicable, the priority claim will be deemed to have been withdrawn at the end of that time period. The applicant’s priority request would be removed only in respect of the previously regularly filed application that was the subject of the request for priority documents.

When a priority claim is removed the publication date of the application will be recalculated based on the Canadian filing date or the earliest priority claim remaining in the application, if any. See section 20.02 of this Manual for more information on publication when changes are made to the date of priority.

8.07.09 – Search based on priority

Generally, the Industrial Design Office conducts a prior art search six months after the filing date of an application because of the possibility of subsequent filed applications containing designs having earlier priority dates. However, the Industrial Design Office may conduct the search as early as six months from the priority date of the design that is the subject of the application if the applicant submits a certified copy or makes available a copy of the previously regularly filed application through WIPO’s Digital Access Service for each previously regularly filed application on which the priority claim is based. Please note that the date from which the Industrial Design Office may conduct the search will vary depending on the particular circumstances of the case at hand, as well as processing times.

A certified copy of the foreign application and a certificate from the foreign office showing the filing date of the application can be submitted to the Industrial Design Office in a language other than English or French, as long as they are accompanied by a translation of the documents into English or French. If not, the Industrial Design Office will not be able to assess the documentation nor will it advance the search for prior art.

The design disclosed in the priority document must be for the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether or not the design is considered to be the same. If your application contains variants, each of them must be adequately supported by the priority documentation provided. If a variant is not supported, the search will be conducted no earlier than six months after the Canadian filing date. See section 16 of this Manual for more detail on the novelty assessment.

To maximize its benefit, search based on priority can be combined with a request for advanced examination. See section 10 of this Manual for more detail on advanced examination.

Relevant provision(s): 8, 8.1 IDA; 26(2) to (5), 27(1) to 27(6), 28 IDR.

8.08 – Divisional applications

8.08.01 – Divisional applications

The applicant may file a divisional application with the Industrial Design Office for any design applied to a finished article that was disclosed in the original application on its filing date. The finished article must also have been disclosed in the original application. Divisional applications are available for both national and Hague applications.

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

8.08.02 – Requirements

The original application – in other words, the application being divided – must be pending (e.g. the application must not be withdrawn, abandoned and past the reinstatement date, refused or registered).

The applicant must include a statement that identifies the application as a divisional. This statement must be submitted to the Industrial Design Office as part of the application or in a separate document, no later than three months after the date on which the divisional application was received in the Industrial Design Office. To facilitate processing within the Industrial Design Office, it is strongly advised that applicants indicate that an application is a divisional when it is filed.

8.08.03 – Deadline to file a divisional

A divisional application can be filed up to two years after the filing date of the original application, or the earliest original application in the series of applications from which the divisional results.

8.08.03.01 – Exception

After the two year period has expired, an application can still be divided if a report by the Industrial Design Office requires that the applicant limit its application to one design or to variants, applied to a single finished article.

Divisional application(s) can be filed for designs identified as separate designs in the examiner report. These applications must be filed as long as no more than six months have elapsed since the day on which the original application was limited to one design or to variants and the original application is still pending. To ensure that the original application remains pending, applicants may request a delay of registration on the original application. See section 11 of this Manual for more information.

8.08.04 – Deemed actions in relation to request for priority

If any of the following actions have been taken in respect of the original application, on or before the day on which a divisional application is received, they are deemed to have been taken, on the same day, in respect of the divisional application:

Relevant provision(s): 20(2) to (6), 29 IDR.

Section 9 – Classification

9.01 – New classification system

To align with international standards, the Industrial Design Office has introduced a new Canadian Classification Standard for Industrial Designs with the Locarno Classification System as its core framework. This international standard is administered by WIPO and is reviewed and updated by the Committee of Experts of the Locarno Union every five years. If required, the Industrial Design Office will review and update the Canadian Classification Standard for Industrial Designs on the same schedule to ensure the Industrial Design Office continues to align with the international classification standard.

The Industrial Design Office classifies each design in order to conduct a novelty assessment. Specific classes are assigned based on the particular type of article to which the design is applied, e.g., a design for a paintbrush would be classified in the subclass 04 “Paint Brushes, brushes for use in cooking” of class 4 “Brushware” (04-04). Some classes may also contain sub-subclasses that further categorize the type of article to which the design is applied.

It is important that the application clearly identifies the finished article so that the design can be classified accurately. For articles with a specialized area of use or a technical nature, additional information about use or purpose may assist the Industrial Design Office in the classification exercise; this information may be provided in a covering letter accompanying the application. If an application is unclear about what the finished article is and how it should be classified, the Industrial Design Office will issue an objection to the design‘s registration and require additional information or modifications to be made to the name of the finished article.

Section 10 – Advanced examination

10.01 – Request and fee

The Industrial Design Office will advance examination of an application out of the routine order on request including payment of the $500 fee as set out in Item 10 of the Schedule to the Regulations.

Relevant provision(s): 23 IDR.

Section 11 – Delay of registration

An applicant may wish to delay registration of a design for a variety of reasons. For example, to allow more time to file a divisional application or to file another application for the same design in another country (some jurisdictions may reject an industrial design application if the design has already been registered in another country).

11.01 – Request and fee

A request for delay of registration can be made at any time before registration, provided that the Industrial Design Office has enough time to implement the delay of registration. The request must identify the application affected and be submitted with the $100 fee as set out in Item 11 of the Schedule to the Regulations.

The Industrial Design Office will delay the registration of the design until the day that is 30 months after the filing date of the application or, if a request for priority was made, 30 months after the earliest filing date of the previously regularly filed application on which the request for priority is based.

The Industrial Design Office will send the applicant a confirmation letter acknowledging receipt of the request once the required information and fee are received.

11.02 – Timing of request

Applicants are advised to submit a request to delay registration and the prescribed fee as early as possible to ensure that it is technically feasible to delay registration. If the Industrial Design Office does not receive the request and fee within a reasonable time, it may be unable to process the request prior to registration. Consequently, applicants are advised to submit their request to delay registration together with the fee when the application is filed, or as early as possible in the process.

11.03 – Withdrawal of a delay of registration

A request for delay of registration may be withdrawn on written request from the applicant or their agent.

There is no fee to withdraw a request for delay of registration. The Industrial Design Office will not issue a refund for a withdrawn request.

Relevant provision(s): 24 IDR.

Section 12 – Withdrawing an application

12.01 – Request

An application may be withdrawn at any time prior to registration, upon written request. The request must clearly identify the application that is to be withdrawn. The examination fee will not be refunded.

If the Industrial Design Office receives the request after a design has been registered, the registration cannot be withdrawn. However, the request for withdrawal will be placed on file.

12.02 – Impact on the date on which the application is made available to the public

An application will not be made available to the public if it is withdrawn at least two months before the prescribed date. However, applicants are encouraged to submit a request to withdraw an application as early as possible to ensure it is technically feasible to withdraw the application. Information on the prescribed date for making an application available to the public is provided in section 20.01 of this Manual. If the application is withdrawn less than two months before the prescribed date, it will nevertheless be made available to the public.

Relevant provision(s): 8.3(5) IDA; 32(4) IDR.

Chapter 3 – Examination

Section 13 – Industrial design subject matter

13.01 – General

The Industrial Design Office examines an application for the registration of a design to assess if:

When an application is filed, the Industrial Design Office will conduct an examination to ensure it was filed correctly. The Industrial Design Office will first determine the filing date of the application. Following this, the design will be classified based on the particular type of article to which the design is applied and formalities will be examined. Formality issues can be raised at any time prior to registration. If there are no formality issues, or they have been addressed following a report, the Industrial Design Office will examine to ensure the subject matter of the design is registrable. The Industrial Design Office also will consider that the applicant or his predecessor in title created the design. Once these steps are completed, the Industrial Design Office will conduct a search for prior art and will assess the novelty of the design.

13.02 – Registrable subject matter

“Design” or “industrial design” is defined in section 2 of the Act as meaning “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”.

13.02.01 – “Features of shape, configuration, pattern or ornament”

Features of “shape” and “configuration” refer to the finished article’s 3D structure. “Shape” refers to the external form [4] or outline [5] of the article and “configuration” refers to the arrangement of the parts that make up the finished article. [6]

Features of “pattern” and “ornament” refer to the two-dimensional elements placed on the finished article for decorative purposes. A “pattern” refers to repeating decorative elements which are all the same. Finally, “ornament” refers to any other decorative element placed on the surface of the finished article.

13.02.02 – “and any combination of those features”

The Industrial Design Office considers “and any combination of those features” in the Act’s definition of “industrial design” to mean that a design may be comprised of any combination of shape, configuration, pattern or ornament.

13.02.03 – “in a finished article”
13.02.03.01 – Definition of “finished article”

A finished article means anything that is made by hand, tool or machine. It does not need to be a useful article. The Industrial Design Office applies this definition broadly and considers that a design can be applied to any physical embodiment. [7]

If an application is unclear about what the article is and how it should be classified, the Industrial Design Office will issue an objection to the design‘s registration and require additional information or modifications to be made to the name of the finished article.

13.02.03.02 – Name generally known and understood by the consumer

In an application for the registration of a design, the “finished article” should be identified by a name generally known and understood by the consumer. Limited references to function or construction principles may be accepted provided they are not overly descriptive.

13.02.03.03 – Component parts of an article

The name of the finished article must identify the complete article and not its component parts. When a design is applied to an article with multiple independent parts that assemble to form one finished article, the article should be identified as a single entity.

If the name of the finished article implies that the application contains more than one design or variants, the name will not be accepted. See section 8.04 of this Manual for more information.

Designs applied to component parts of an article may be the subject of separate applications. For example, the Industrial Design Office considers that a light bulb is a finished article even though it is used as part of a lamp because it is sold separately from the lamp. On the contrary, the heel of a sock cannot itself be an article as it cannot be sold separately from a sock.

13.02.04 – “appeal to and are judged solely by the eye”

The features of shape, configuration, pattern and ornament must “appeal to and be judged solely by the eye”. This assessment is from the perspective of the informed consumer who is familiar with the relevant market field. [8]

This requirement is intended to exclude designs where a consumer chooses an article because the design is useful to them and not for its visual appeal. [9] This “appeal” does not need to be judged in an aesthetic or artistic sense. The visual appeal must only attract the attention of the consumer. [10]

13.03 – Unregistrable subject matter

13.03.01 – Solely Functional Designs

A design is not registrable if it is composed only of features that are dictated solely by a utilitarian function. [11]

13.03.02 – Design contrary to public morality or order

A design is not registrable if it is contrary to public morality or order.

The Industrial Design Office considers whether an application is “contrary to public morality” on a case-by-case basis, taking into account generally accepted mores of the time.

As an example of objection on the basis of public order, the Industrial Design Office may refuse to register designs that incorporate images of the 11-point Maple Leaf (Example 36 - Fig. 1) such as the Canadian flag (Example 36 - Fig. 2) or the Official Canadian Coat of Arms (Example 36 - Fig. 3). For more information, please consult the Commercial Use of Canadian Symbols page on the Government of Canada’s Website.

Example 36 Official Canadian symbols

Titre : Example 36 – Official Canadian symbols - Figure 1 - Description : Figure 1 shows the red coloured 11-points Maple Leaf.

Fig. 1

Titre : Example 36 – Official Canadian symbols - Figure 2 - Description : Figure 2 shows the Canadian flag. The flag is rectangular and in its centre is a red 11-points Maple Leaf. There are two red bands on both sides of the flag.

Fig. 2

Titre : Example 36 – Official Canadian symbols - Figure 3 - Description : Figure 3 shows the Canada Coat of Arms. 

The design of the Coat of Arms includes: 

The symbols of the four founding nations of Canada featured on the shield: the three royal lions of England, the royal lion of Scotland, the royal fleur-de-lis of France, and the royal Irish harp of Tara;

The lion of England holding the Royal Union Flag and the unicorn of Scotland carrying the flag of Royal France;

the floral emblems of the four founding nations: the English rose, the Scottish thistle, the French fleur-de-lis, and the Irish shamrock;

the Royal Crown at the top, indicating that these are the Arms of Her Majesty the Queen in Right of Canada, commonly called the “Canada Coat of Arms”, the “Coat of Arms of Canada”, the “Arms of Canada” or the “Royal Coat of Arms of Canada”.

Fig. 3

Relevant provision(s): 2, 7, 11.1 IDA.

Section 14 – Examiner reports

14.01 – Reports

If after examination, the Industrial Design Office has reasonable grounds to believe that a design is not registrable, it will send the applicant a report indicating its objections to registration. Applicants will be invited to respond to the objections no later than three months after the date of the report.

If the response does not overcome all of the objections, the Industrial Design Office may send another report raising new objections or maintaining the outstanding objections to registration and give another opportunity for the applicant to respond to the objections. Alternatively, the Industrial Design Office may send a Notice of Possible Refusal, which will identify the outstanding objections and the applicant will have three months to request a review by the Patent Appeal Board. See section 18 of this Manual for more information on refusal, review and appeal.

14.01.01 – Response time and extension of time

The applicant must reply to the objections no later than three months after the date of the report. This time period to reply may be extended by six months by submitting a request for extension of time to the Industrial Design Office. Only one request may be made in respect of a particular report.

Note that the request must be submitted before the end of the deadline stated in the report otherwise; the application will be deemed abandoned. See section 15.01 of this Manual for more information on abandonment.

14.01.02 – Examination - Relevant Applications
14.01.02.01 – Applications that cannot be disclosed

During the examination of an application for the registration of a design, a Hague application or national application may be relevant to an objection but cannot yet be disclosed to the public. If this occurs, the applicant will be informed that a relevant application has been identified but cannot be disclosed yet. Once the relevant application has been made available to the public or is withdrawn, the Industrial Design Office will issue a report if necessary.

14.01.02.02 – If assessment of priority claim is necessary for novelty

During the examination of an application for the registration of a design, prior art dated between the requested priority date and the filing date may be relevant. If this occurs, the Industrial Design Office will request the applicant to either submit a certified copy of their priority documents or make a copy of the previously regularly filed application available on the WIPO Digital Access Service. For more information, see section 8.07.08 of this Manual.

Relevant provision(s): 5 IDA; 22(1) to (5) IDR.

Section 15 – Abandonment and reinstatement

15.01 – Abandonment

If the applicant does not reply in good faith to a report in the time period allotted, the application is deemed to be abandoned. Once the application has been abandoned, the Industrial Design Office will send a "Notice of Abandonment" to the applicant as a courtesy. The notice will set out the reason(s) for abandonment and the requirements for reinstatement.

15.02 – Reinstatement

An abandoned application may be reinstated provided that the applicant makes the request within six months after the day on which the application is deemed to be abandoned. Such request must be accompanied by the following:

If these requirements are not met within the prescribed period, the application will become "inactive" and no further action can be taken.

Relevant provision(s): 22(6), (7) and item 9 of the Tariff of Fees, IDR.

Section 16 – Novelty assessment

16.01 – Guiding principles

16.01.01 – Novel design

The Industrial Design Office determines whether a design is novel by:

  1. Determining the features of the design;
  2. Establishing the priority date of the design;
  3. Identifying relevant prior art; and,
  4. Comparing the design to the relevant prior art.
16.01.02 – Priority date of the design

The priority date of a design is the filing date of the application in Canada, unless a request for priority is made in accordance with the Regulations. See section 8.07.01 of this Manual for additional information on request for priority.

16.01.03 – Features of the design

The features that constitute the design are determined by the representation of the design, the name of the finished article to which the design is applied and any accompanying statement.

For example, if the representation of the design depicts a bottle with a pattern applied to it and a statement limits the design to the feature of shape of the bottle and not the pattern, then only the shape is relevant for the novelty assessment. If, on the other hand, the application is not limited to any particular feature, then all the features of the design as a whole will be considered when assessing novelty.

It is also possible to limit the design to a part of the article. See section 8.06.02 of this Manual for more information.

16.01.04 – Relevant prior art

Subject to the novelty exceptions described in the following section of this Manual, relevant prior art includes any design applied to the same or analogous finished article that was made available to the public (disclosed to any person) in Canada or elsewhere before the priority date of the design as well as any design disclosed to the Industrial Design Office in a pending application with an earlier priority date. Generally, the Industrial Design Office considers that articles are analogous if they share the same function. [12]

16.01.04.01 – Exclusions from prior art

When a design in an applicant’s earlier filed application does not differ substantially from a design in the same applicant’s later filed application, registration of the later filed design would generally be blocked by the earlier one for lack of novelty. If however, the filing date of the later filed application is no later than 12 months after the filing date of the earlier filed application, that application will not be considered in the prior art as described by section 31 of the Regulations.

Another exclusion is described in paragraph 8.2(1)(a) of the Act. Essentially, this provision creates a grace period for designs that have been made available to the public, in Canada or elsewhere, by either the person who filed the application, a predecessor in title or by a person who obtained, from them, knowledge of the design. The Industrial Design Office will not include in the prior art a design that was disclosed less than 12 months before the priority date of the design in the application. Please note that not all jurisdictions allow for this grace period. Therefore, applicants should carefully consider the timing of their public disclosure.

16.01.05 – Comparison of the prior art with the applied for design

The Industrial Design Office compares the design in an application with the prior art in order to assess if the same or a substantially similar design is 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.

It is difficult to define with precision what a substantial change is and by how much a design needs to differ from the prior art before it is considered novel. In some cases, the jurisprudence indicates that a new design may be one in which the difference from previous designs is very slight. [13] In others, simple variations, [14] a slight change of outline or configuration, or an unsubstantial variation is not sufficient to enable the author to obtain registration. [15] Laddie, Prescott and Victoria, in The Modern Law of Copyright and Designs, stated that:

It is somewhat unsafe to rely upon expressions used by a court in one case when deciding on validity as laying down a reliable test for use in other cases. After all, the courts are trying to explain in words what is normally incapable of being so explained. What amounts to sufficient novelty is a matter of feel rather than science. At best looking at the words used and the decision reached in past cases gives an indication of the considerations which the courts have borne in mind when answering the simple question ‘is this design too close to the prior art?’. [16]

To assess whether a design is novel remains a question of fact that is dependent on the nature and character of the design. [17] The Industrial Design Office conducts a visual test from the perspective of the eye of the informed consumer. [18] The courts have developed techniques to assess the similarities and differences between two designs:

There is no requirement that the “concept, idea or expression” of the design be novel. It is only required that the design applied to a finished article be new and substantially different from the prior art. A design can be new even if it is made by blending known designs together as long as the combination of these known designs creates a design that is new and substantially different from the prior art. [25]

16.02 – Search based on date of priority

Generally, the Industrial Design Office conducts a prior art search six months after the filing date of an application because of the possibility of subsequent filed applications having earlier priority dates. However, the Industrial Design Office may conduct the search as early as six months from the priority date of the design that is the subject of the application if the applicant submits a certified copy or makes available a copy of the previously regularly filed application through WIPO’s Digital Access Service for each previously regularly filed application on which the priority claim is based. Please note that the date from which the Industrial Design Office may conduct the search will vary depending on circumstances of the case at hand, as well as processing times. To maximize its benefit, search based on priority can be combined with a request for advanced examination. See section 10 of this Manual for more detail on advanced examination.

16.02.01 – Language requirements

A certified copy of the foreign application and a certificate from the foreign office showing the filing date of the application can be submitted to the Industrial Design Office in a language other than English or French, as long as they are accompanied by a translation of the documents into English or French. If not, the Industrial Design Office will not be able to assess the documentation nor will it advance the search for prior art.

16.02.02 – A supported priority claim

The design disclosed in the priority document must be for the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether or not the design is considered to be the same. If your application contains variants, each of them must be adequately supported by the priority documentation provided. If a variant is not supported, the search will be conducted no earlier than six months after the Canadian filing date.

Relevant provision(s): 7(b), 8, 8.2(1)(a) to (c) IDA; 31 IDR.

Section 17 – Amendments to an application

17.01 – General rule

An application may be amended at any time prior to the registration of the design except in the circumstances outlined below:

17.02 – Limitations on amendments

17.02.01 – Modify the identity of the applicant

An application may not be amended to change the identity of the applicant except, for a national application, to correct an error in the applicant’s name or as a result of the recording of a transfer.

17.02.02 – Add a representation of a design

An application may not be amended to add a representation of a new design. For example, it is unacceptable to add a new design or a new variant in the application. The addition of a photograph or reproduction of the design in the application is acceptable provided that it does not add new subject matter.

17.02.03 – Change a design or a statement

The representation of a design or any statement may not be amended if it results in a substantial change to the design as filed.

17.02.04 – Add an indication of divisional application

An application may not be amended to add an indication that it is a divisional application after three months have passed since the date on which the application was received.

17.02.05 – Change to a substantially different name of the finished article after the application is made available to the public

An application may not be amended to change the name of the finished article to the name of a substantially different finished article, on or after the date on which the application has been made available to the public.

17.03 – Clerical errors

A request to correct a clerical error is treated as a request to amend the application. For correcting obvious errors affecting a registration, see section 19.05 of this Manual.

Relevant provision(s): 25 IDR.

Section 18 – Refusal, review and appeal

18.01 – Notice of Possible Refusal and the refusal

Objections to registration are set out in examination reports. If the objections raised in the examination reports are not overcome, a Notice of Possible Refusal will be issued by the Industrial Design Office. Before sending a Notice of Possible Refusal, the Industrial Design Office will inform the applicant that it may issue the Notice of Possible Refusal in an examination report if the applicant does not address or overcome the objections in that report.

Once a Notice of Possible Refusal has been issued, the applicant will have three months to request a review of the application by the Patent Appeal Board. The request for review should be sent to the Industrial Design Office. If no request is received within three months of the Notice of Possible Refusal, the application will be considered for refusal and a final decision will be communicated to the applicant.

18.02 – Review by the Patent Appeal Board

The Patent Appeal Board will review an application for the registration of a design at the request of an applicant and after a Notice of Possible Refusal has been sent. The Patent Appeal Board may hold an oral hearing if requested by the applicant. After reviewing the application, a recommendation will be made to the Commissioner of Patents. A final decision will be communicated to the applicant.

18.03 – Appeal of a refusal

18.03.01 – National applications

If the applicant disagrees with a refusal from the Industrial Design Office on a national application, an appeal to the Federal Court may be available under section 22 of the Act.

18.03.02 – Hague applications

Specific rules apply to appeal a decision in regards to a Hague application. See section 28 of this Manual for more detail.

Relevant provision(s): 6(1), 22 IDA

Chapter 4 – Registration and publication

Section 19 – Registration and exclusive right

19.01 – General information

If the Industrial Design Office is satisfied that the design is registrable, it will proceed to registration unless a delay of registration is requested. The Industrial Design Office will send the applicant a registration package containing:

19.02 – Duration of exclusive right

19.02.01 – Duration: National registrations

The exclusive right begins on the date of registration and ends on the later of the end of 10 years after registration and 15 years from the Canadian filing date. To maintain the exclusive right for its complete duration, a maintenance fee must be paid. See section 21 of this Manual for more details on the maintenance of a registration.

19.02.02 – Duration: Hague registrations

Specific rules apply to the term of the exclusive right in respect of a Hague registration. See section 28.02 for more information.

19.03 – Delay of registration

It is possible to delay the registration of a design. See section 11 of this Manual for more information.

19.03.01 – Non-application to Hague applications

The registration of a design that is the subject of a Hague application cannot be delayed.

19.04 – The Register of Industrial Designs

Particulars of a registration will be entered in the Register of Industrial Designs (the Register). The Register will contain prescribed information such as, among other things, the filing date of the application, particulars of any transfers, information pertaining to the registered proprietor and the date of registration of the design.

19.04.01 – Hague registrations

Hague registrations will not be found in the Canadian Register of Industrial Designs. Particulars of a Hague application or a Hague registration will be recorded in the International Register. See section 25 of this Manual for more details on the International Register.

19.05 – Correction to a registration

An error in a registration may be corrected within six months of registration if the error is obvious from documents relating to the registered design that are in the Minister’s possession at the time of registration. After six months, a correction to a registration may only be possible under the authority of the Federal Court.

A correction cannot be made after the six-month period from registration has ended, even if the request for correction was received prior to the end of that period. Accordingly, it is recommended that the registered proprietor or the appointed agent verifies the registration package (see section 19.01 of this Manual) and request any required corrections as soon as possible.

19.06 – Expungement and invalidation

The Federal Court may add, expunge or vary a registration. A copy of the order will be communicated to the Industrial Design Office and placed on file. The Industrial Design Office will rectify or alter the Register in conformity with the order.

19.06.01 – Non-application to Hague registrations

Specific rules apply to the invalidation of Hague registrations. See section 29 of this Manual for more details.

Relevant provision(s): 3, 3.1, 10(1), 22 IDA; 13, 40(1) IDR.

Section 20 – Applications and information made available to the public

20.01 – Prescribed date for making the application available to the public

20.01.01 – Applications made available to the public

An application and its related documents will be made available to the public on the earlier of the date of registration of the design and the day that is 30 months after the filing date of the application or from the earliest priority date of any design in the application. Note that this means that an application could be made available to the public prior to registration.

20.01.02 – Documents relating to multiple applications

If a document provided to the Industrial Design Office relates to more than one application or registration, the document will be made available to the public at the earliest date that an application or registration to which that document relates is made available to the public.

20.01.03 – Non-application to Hague applications

The prescribed date for making an application available to the public does not apply to Hague applications and divisional applications resulting from a Hague application. Rather, these applications and documents are made available to the public on the date of publication set out by the International Bureau. Generally, these applications will be public during the course of prosecution before the Industrial Design Office. See section 24.01 of this Manual for more details.

20.01.04 – Withdrawn applications

If an application is withdrawn at least two months before the date on which it must be made available to the public, the application and its related documents will not be made available to the public. Otherwise, the application and its related documents will be made available to the public. See section 20.01.01 of this Manual for more information on the prescribed date on which an application is made available to the public.

20.02 – Changes made to the date of priority

Where there is a request for priority made in respect of an application, the earliest date of priority will affect the date on which an application is made available to the public. If the priority date is changed, the date on which an application is made available to the public will be reassessed. If a request for priority is withdrawn at least two months before the date on which an application should have been made available to the public, this date will be recalculated without taking into account that priority request.

20.03 – Canadian Industrial Designs Database

20.03.01 – Applications made available online

Once an application is made available to the public, it will be entered in the Canadian Industrial Designs Database. The database contains information pertaining to industrial designs registered in Canada since 1861.

20.03.02 – Weekly update

This database is for information purposes only. Recent updates, corrections or changes may not be included at time of viewing due to mail processing delays and as the information is updated only once a week.

20.03.03 – Hague Express database

Hague applications and registrations will be listed in the Canadian Industrial Designs Database and users will be redirected to WIPO’s Hague Express database for detailed information pertaining to international registrations.

Relevant provision(s): 8.3 IDA; 32 IDR.

Section 21 – Maintenance of exclusive right

21.01 – General information

21.01.01 – Payment of the maintenance fee