Given the recent weather you may, like me, be happy to see the
end of January. For February I would like to continue the
discussion relating to industrial design registrations.
One of the most difficult things about industrial designs is
that the Industrial Design Act contains a relatively short
period in which an application for design must be filed. The
time period is triggered by "publication" of the
design. In some cases what constitutes publication can be
The Act provides that the registration of a design
shall be refused if the application for registration is filed in
Canada more than one year after the publication of the design in
Canada or elsewhere. Publication anywhere in the world must be
Publication means offering or making an article available to the
public. In this context the definition includes those who are, in
fact, or are considered by the design owner as apt to be,
interested in purchasing the article to which the design is applied
or taking advantage of its availability. Disclosure of the design,
for the purpose of obtaining orders for an article to be made
according to the design, is a publication of the design.
Publication must generally be of a commercial nature. Publication
to service providers by the design owner to develop a commercial
version of the design does not constitute publication.
All disclosures for the purpose of soliciting orders typically
constitute publication. The sale or exhibition of the article to
which the design is applied will be publication.
In one case, prior to committing itself to the production of a
breakfast nook product, a manufacturer had shown a plastic
prototype to buyers for most of the large retail stores and chains
in Canada. In addition, the product was displayed at
housewares expositions and shows in Canada and the U.S. It
was found that the manufacturer's registered design was
"published" in Canada more than one year before its
registration and that the registration was invalid.
IP Treaties and Potential Legislative Changes
On January 27, 2014 the Minister of Foreign Affairs tabled five
IP treaties in Canada's House of Commons:
the Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks;
the Singapore Treaty on the Law of Trademarks;
the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the
Registration of Marks;
the Geneva Act of the Hague Agreement Concerning the
International Registration of Industrial Designs
the Patent Law Treaty.
This is the first procedural step towards ratification and
implementation which will take a considerable period of time.
However it is indicative of fairly significant changes to Canadian
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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