Below is an excerpt from
John McKeown'sApril Mailer where he continues his
comments about industrial designs.
The proprietor of a design may apply to register a design by
paying the prescribed fees and filing an application with the
Office of Commissioner of Patents. The application must
a drawing or photograph of the design and a description of the
a declaration that the design was not, to the proprietor's
knowledge, in use by any other person than the first proprietor at
the time the design was adopted by the first proprietor.
There must be a written description of the design. The
description must indicate whether the design relates to the
appearance of the entirety of the article or to the appearance of a
portion of the article. The description must make clear which of
the visual features shown in the drawings comprise the design.
The description is important since it and the drawing or
photograph of the design determine the extent of the exclusive
right to which the proprietor is entitled.
A six month grace period for an application which has been filed
in specified foreign countries is available. If
the proprietor files an application for the same design in Canada
within the grace period the Canadian application will obtain the
benefit of the foreign priority filing date.
An exclusive right for the industrial design may be acquired by
registration of the design under the Act. During the existence of
an exclusive right, no person may, without the licence of the
proprietor of the design,
make, import for the purpose of trade or business, or sell,
rent, or offer or expose for sale or rent, any article in respect
of which the design is registered and to which the design or a
design not differing substantially therefrom has been applied;
do, in relation to a kit, anything specified in paragraph (a)
that would constitute an infringement if done in relation to an
article assembled from the kit.
After an application has been allowed a certificate will be
issued by the Commissioner of Patents stating that the design has
been registered in accordance with the Act. In the absence
of proof to the contrary, the certificate is sufficient evidence of
the design, the originality of the design, the name of the
proprietor, the person named as proprietor being proprietor, the
commencement and term of registration, and compliance with the
A certificate that has been issued under the Act is
admissible in evidence in all courts without proof of the signature
or official character of the person appearing to have signed
A registration of a design can be obtained without incurring
large expenditures although the process of obtaining a registration
is slow. It is easier to bring an action for infringement of a
registered industrial design than an action for passing off, which
is the common law equivalent. In a passing off action it is
necessary to show that there is goodwill associated with the design
which can be difficult and time-consuming to do. This is not
necessary in an infringement action.
Amendments to the Trade-marks Act
The Government has introduced a 2014 omnibus budget
implementation bill, to enact policies that were introduced in the
2014 budget. The bill was tabled in Parliament on Friday, March
Division 25 of Part 6 of the bill will amend the Trade-marks
Act to, among other things, make that Act consistent
with the Singapore Treaty on the Law of Trademarks and add the
authority to make regulations for carrying into effect the Protocol
Relating to the Madrid Agreement Concerning the International
Registration of Marks. The amendments include the simplification of
the requirements for obtaining a filing date in relation to an
application for the registration of a trade mark, the elimination
of the requirement to declare use of a trade mark before
registration, the reduction of the term of registration of a trade
mark from 15 to 10 years, and the adoption of the classification
established by the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the
Registration of Marks.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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