Below is an excerpt from John McKeown’s February Mailer.
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 unclear.
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 considered.
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 (“Hague”); and
- 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 IP laws.
To read the full Monthly Mailer please click here.
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.