15 Nov
2019

Protecting and enforcing design rights: Canada

Smart & Biggar

Legal framework

In Canada, the visual aspects of an article may be protected (potentially concurrently) under three different IP regimes:

  • industrial designs – governed by the Industrial Design Act (RSC, 1985, c I-9) and the Industrial Design Regulations (SOR/2018-120);
  • trademarks – governed by the Trademarks Act (RSC, 1985, c T-13) and the Trademarks Regulations (SOR/2018-227); and
  • copyright – governed by the Copyright Act (RSC, 1985, c C-42) and the Copyright Regulations (SOR/97-457).

In the past year, Canada’s IP regime has been significantly overhauled, with more changes to come. The changes began on 5 November 2018 when substantial amendments to the Industrial Design Act and the Industrial Design Regulations entered into force, modernising Canada’s industrial design law and enabling the filing of design applications for Canada under the Hague Agreement. Similarly, on 17 June 2019, sweeping changes to the Trademarks Act and the Trademarks Regulations were introduced, including changes required to enable the filing of trademark applications for Canada under the Madrid Agreement.

All new industrial design and trademark applications filed in Canada will be examined under the new industrial design and trademark laws.

Industrial designs

The Canadian industrial design regime provides a flexible means of protecting the aesthetic features of an article (ie, its shape, configuration, pattern or ornament, or any combination of these features). Colour in combination with other features may now be protected.

In order to be registrable, the design must be applied to an article which is capable of being made and sold separately. This requirement is interpreted liberally and extends to, for example, replacement parts and animated designs embodied on a display screen.

Canada provides a six-month priority deadline to claim priority of an earlier filed application. To be registrable, an industrial design must be novel over designs publicly disclosed before the priority date of the application and designs disclosed in applications with an earlier priority date. Public disclosures by the applicant up to 12 months before the priority date are not considered prior art. Additionally, earlier applications filed in Canada by the applicant within 12 months of the application are not considered prior art.

To evaluate whether a design is novel, the Canadian Intellectual Property Office (CIPO) will assess the design visually from the perspective of the eye of the informed consumer, taking into account several factors:

  • designs should be examined side by side as well as separately, so that imperfect recollection comes into play;
  • the design should be considered as a whole;
  • articles which are in a field that has existed for a long time and which are in constant and daily use must present design differences that are marked and substantial;
  • when an article is primarily functional, minimal aesthetic differences may suffice; and
  • features that appeal to a consumer not because of their visual appeal but only because of their functional advantages should be ignored.

The concept of ‘novelty’ has been newly introduced to the Industrial Design Act. The Canadian courts have not yet considered whether the ‘novelty’ test is equivalent to the ‘originality’ test (applied under the previous Industrial Design Act), although it is the stated intention of the CIPO that the tests be equivalent.

The term of protection of a design registration begins on the date of registration and ends either 10 years from the date of registration of the design or 15 years from the filing date, whichever is the later, in each case subject to the payment of a single renewal fee.

While there is no protection available in Canada for unregistered industrial designs, rights in unregistered designs may arise under trademark or copyright law.

Trademarks

In addition to industrial designs, trademark protection can also be leveraged to provide extended (and potentially perpetual) protection for the aesthetic features of an article.

Under Canada’s new Trademark Law, such features can be protected as three-dimensional shapes or a mode of packaging goods (such marks are commonly referred to as non-traditional trademarks).

In order to obtain registration for such trademarks, the applicant must be able to show that the trademark has been used so as to have become distinctive as of the Canadian filing date. In other words, the applicant must demonstrate that the public has come to recognise the trademark as designating the owner as the source of the product. Evidence of distinctiveness may be filed with the CIPO by way of affidavit or statutory declaration. Proof of distinctiveness across Canada must be submitted; failing which, the resulting registration may be limited geographically.

Due to the difficulties of obtaining registrations for non-traditional trademarks (at least at the outset), an effective IP strategy may employ both trademarks and industrial designs. For example, an industrial design registration can first be obtained for a new product. During the term of the design registration, the owner then has the opportunity to develop the necessary reputation in the appearance of the article required to register a non-traditional trademark. The resultant trademark registration can then be enforced long after the industrial design registration expires.

Once registered, a trademark registration is valid for 10 years and can be renewed indefinitely for successive 10-year terms.

In Canada, trademark rights, including in the aesthetic features of an article, can also arise as a result of the use of an unregistered trademark. However, unregistered rights are limited geographically to the particular area in which the owner can show significant reputation and good will.

Copyright

Copyright law can, to a limited extent, also be used to protect the visual characteristics of an article since it protects (among other things) every original artistic work. If the term ‘artistic work’ is applied to an article as defined in the Industrial Design Act, it may be possible to obtain concurrent copyright and industrial design protection.

However, copyright protection is not available to most mass-produced articles. In particular, if a design is applied to a useful article (ie, one that has a utilitarian function) which is reproduced more than 50 times, it will not be deemed copyright infringement for a third party to reproduce or copy that article (referred to as the ‘more than 50’ rule). There are very limited exceptions to the ‘more than 50’ rule. For example, an exception applies if the copyrighted work is a graphic or photographic representation applied to the face of an article.

Although copyright can be registered with the CIPO, registration is rarely sought since copyright automatically exists as soon as an original work is created and generally extends for the life of the author plus 50 years following the author’s death.

Procedures

Industrial designs

Industrial designs can be filed directly through the CIPO or under the Hague System for the International Registration of Industrial Designs by designating Canada. The information provided below concerns the filing of applications directly with the CIPO.

An application must contain:

  • the name of the applicant;
  • the name of the finished article; and
  • a representation of the design.

The representation may be depicted using a wide range of illustration techniques, including line drawings, photographs and computer-aided design models. An applicant may file as many views as necessary in order to fully disclose the features of the design.

A description of the design or statement of limitation is optional. Without a statement of limitation, the application is deemed to relate to all features of shape, configuration, pattern and ornament shown in the representation of the design, unless an exception applies. The most common exception is the use of dotted lines in the drawings to exclude features from the claimed design.

An application for an industrial design must be for one design applied to a complete, finished article. The representation of the design must include at least one illustration that shows the design in isolation or the finished article in isolation. An application may include variants (ie, designs applied to the same article or set and that do not substantially differ from one another), but not different designs. If the CIPO considers there to be multiple designs in one application, a report will be issued and the applicant may have to select one design for the application and file divisional applications for the other designs.

Once the application is filed, it will be examined for novelty and conformance to Canadian requirements. If there are any deficiencies in the application or if an identical or substantially similar design is identified by the examiner, an examination report will be issued. If the objections raised in the examination report are not overcome by the applicant, the design will be refused. In that case, the applicant can request a review of the application by the Patent Appeal Board. Final decisions of the Patent Appeal Board can be appealed by the applicant to the Federal Court of Canada.

If the CIPO is satisfied that the design is registrable, it will proceed to registration unless a delay of registration is requested. A request for a delay of registration can be used to delay registration and, by extension, publication of the design. In particular, the industrial design will be published either on the registration of the design or 30 months from the priority date (or the filing date if there is no priority date), whichever is the earlier.

Trademarks

In Canada, a trademark application can be filed electronically or by paper through the CIPO or by designating Canada in international applications filed using the Madrid System. The information below pertains to filings through the CIPO.

After a trademark application is filed, it will undergo examination to ensure that the application complies with all formal and substantive requirements.

An examiner can issue a report objecting to the registration of a trademark based on technical deficiencies in the application itself, registrability (eg, confusion with a registered trademark or descriptiveness), entitlement or lack of distinctiveness. If the applicant fails to overcome the objections raised in the report, the application will be refused. The refusal of an application may be appealed by the applicant to the Federal Court of Canada.

Once an application is approved, it will be advertised for opposition purposes. If no opposition is filed (or an opposition is wholly or partially unsuccessful), the application will eventually mature to registration.

Copyright

The owner of a work can file an application for a copyright in Canada. There is no substantive examination for copyright in Canada.

Enforcement

Industrial designs

An industrial design registration gives the owner an exclusive right to the design in association with 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.

A four-step test is applied in respect of infringement:

  • examination of the prior art;
  • assessment of utilitarian function, and methods and principles of manufacture and construction;
  • analysis of the scope of protection outlined in the language and figures of the registered design; and
  • comparative analysis of the registered design and the allegedly infringing product (AFX Licensing Corp v HJC America Inc, 2016 FC 435; see also Bodum USA Inc v Trudeau Corp (1889) Inc, 2012 FC 1128).

The remedies available to the owner of an industrial design registration include:

  • declaration of infringement;
  • interim, interlocutory or permanent injunctions;
  • financial remedies (including damages or an accounting of profits, punitive damages, pre and post-judgment interest, and costs which are typically awarded to a successful litigant and include a portion of legal fees and all reasonable disbursements); and
  • delivery up or destruction of infringing products.

The marking of products protected by an industrial design provides a significant advantage when enforcing an industrial design registration. While the marking of products protected by an industrial design registration is not mandatory in Canada, the Industrial Design Act provides that no remedy other than an injunction will be granted unless the infringer was aware of or had reasonable grounds to suspect that the design was registered. Marking a product with a ‘D’ in a circle followed by the owner’s name is deemed to provide the required notice.

Trademarks

Trademark owners may enforce their registered trademark rights through the following three main causes of action:

  • trademark infringement;
  • depreciation of goodwill; and
  • statutory or common law passing off.

By contrast, the owner of an unregistered trademark is protected only by way of statutory or common law passing off.

A trademark registration is infringed by the unauthorised use of an identical or confusingly similar trademark in association with the sale, distribution or advertisement of another party’s goods or services.

To succeed in a claim of depreciation of goodwill, the plaintiff needs to show that:

  • the defendant made use of a trademark that is confusingly similar to the plaintiff’s registered trademark;
  • the plaintiff’s trademark is sufficiently well known such that it has significant goodwill attached to it;
  • the use by the defendant of the plaintiff’s trademark is likely to affect such good will; and
  • the defendant’s use of the mark is likely to depreciate the value of the goodwill attached to the plaintiff’s trademark (Veuve Clicquot Ponsardin v Boutiques Cliquot, 2006 SCC 23).

Passing off (both statutory and common law) requires the plaintiff to show:

  • the existence of goodwill;
  • deception of the public due to a misrepresentation; and
  • actual or potential damage to the plaintiff (Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65).

Comparable remedies to those outlined above are available for trademark infringement.

Copyright

The ownership of copyright in a work includes the exclusive right to reproduce the work. Copyright is infringed when a work is reproduced without the permission of the owner.

Comparable remedies to those outlined above are available for copyright infringement.

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Christine Genge

Partner

[email protected]

Christine Genge is a partner in Smart & Biggar’s Ottawa office. With more than 20 years of extensive expertise in patent and industrial design intellectual property, she advises Fortune 50 companies and Canadian innovators on securing patent, industrial design and trademark protection. Ms Genge’s background in mechanical engineering informs her practice, which focuses on protecting innovation over a broad range of technologies, from high-tech and consumer products, to oil-field-related innovations.

Ms Genge is a member of Smart & Biggar’s executive committee and is a recognised leader in industrial design protection internationally. Among her leadership roles, she heads the firm’s industrial design practice group and is a past chair of the design committee of the Intellectual Property Institute of Canada.

Nora Labbancz

Associate

[email protected]

Nora Labbancz is an associate in Smart & Biggar’s Ottawa office. She provides strategic counselling and IP services to clients throughout the trademark lifecycle, including clearance, prosecution, opposition and enforcement. In addition to representing clients before the Canadian Trademark Opposition Board, Ms Labbancz also performs trademark clearance searches and provides availability opinions, prepares and files trademark applications, and prosecutes trademark applications before the Canadian Intellectual Property Office.