Vol. 148, No. 21 — October 8, 2014

Registration

SOR/2014-225 September 26, 2014

INDUSTRIAL DESIGN ACT

Regulations Amending the Industrial Design Regulations (Miscellaneous Program)

P.C. 2014-987 September 25, 2014

His Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 25 (see footnote a) of the Industrial Design Act (see footnote b), makes the annexed Regulations Amending the Industrial Design Regulations (Miscellaneous Program).

REGULATIONS AMENDING THE INDUSTRIAL DESIGN REGULATIONS (MISCELLANEOUS PROGRAM)

AMENDMENT

1. Subsection 12(3) of the Industrial Design Regulations (see footnote 1) is repealed.

COMING INTO FORCE

2. These Regulations come into force on the day on which they are registered.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Regulations.)

Background

The Canadian Intellectual Property Office (CIPO) is a special operating agency of Industry Canada and is responsible for administering Canada’s system of intellectual property (IP) rights: patents, trade-marks, industrial designs, copyright and integrated circuit topographies. CIPO’s mandate is to deliver high-quality and timely IP products and services to its customers and to increase the awareness, knowledge and effective use of IP by Canadians. Through these activities, the organization supports creativity, enhances innovation, and contributes to Canada’s economic success.

An industrial design comprises the visual features of shape, configuration, pattern or ornament of a manufactured article. Designs increase the visual appeal and marketability of an endless variety of consumer products such as furniture, athletic footwear, medical instruments, household appliances and textiles.

In Canada, industrial designs are registered under the Industrial Design Act, which is administered by CIPO. An industrial design registration provides its owner with exclusive rights in the visual characteristics of a product, thereby preventing imitation by competitors. Furthermore, a registered design can be assigned or licensed, and can be leveraged to attract financing. Without registration, businesses have no legal protection to prevent others from making, importing, renting or selling their product designs.

In order to obtain registration, an application must be filed with CIPO. The registration process includes a search of prior art (i.e. designs already registered or made public) and an examination of the application to verify compliance with the requirements of the Industrial Design Act and Industrial Design Regulations. If the design is found to be original in comparison to prior art and meets all formal requirements, it will be registered for a maximum term of 10 years, subject to payment of a maintenance fee at the 5-year mark.

Issues

In December 2009, the Standing Joint Committee for the Scrutiny of Regulations (the Committee) informed CIPO of an inconsistency between the French and English versions of paragraph 25(b) of the Industrial Design Act. While the English version provides for the Governor in Council to “make regulations respecting the form and contents of applications for registration of designs[...],” the French version more strictly provides for the exclusive authority of the Governor in Council to determine the form and contents of applications: “Le gouverneur en conseil peut, par règlement: b) déterminer la forme et le contenu des demandes[…].”

The Committee then pointed out that subsection 12(3) of the Industrial Design Regulations prescribes the form of an application by the Commissioner of Patents in the Canadian Patent Office Record, which is supported by the broader English text, but not by the French text. The Committee therefore concluded that subsection 12(3) of the Regulations is invalid and requested that CIPO take steps to rectify this situation.

Objectives

The objective of this regulatory amendment is to address the concerns raised by the Committee and remove a section of the Regulations that is deemed invalid.

Description

To achieve the above objective, this amendment repeals subsection 12(3) of the Industrial Design Regulations.

Consultation

Consultation and prepublication are not required, as this proposal is a miscellaneous amendment regulation.

“One-for-One” Rule

The “One-for-One” Rule does not apply to this proposal, as it is considered a miscellaneous amendment regulation.

Small business lens

The small business lens does not apply to this proposal, as the proposed amendments are not expected to increase costs or regulatory burden on small business.

Rationale

During the Committee’s initial review of the Industrial Design Act and Industrial Design Regulations, it made the recommendation that amending paragraph 25(b) of the Act to say “par règlement: régir la forme et le contenu des demandes[…],” would harmonize the English and French versions of the text.

In April 2010, CIPO informed the Committee of its intent to amend the French text of paragraph 25(b) of the Act by replacing the word “déterminer” with the word “régir,” and to include this in the next set of amendments to the Act, as per the Committee’s recommendation. In response to subsequent communications from the Committee about timing, CIPO indicated that it was not feasible to amend paragraph 25b) independently of a series of other amendments being planned to modernize the Act, and that a specific date for proceeding with an amendment package could not be provided since the analysis was at a preliminary stage.

CIPO is of the view that to otherwise amend the Act to correct this one inconsistency is not feasible at this moment. CIPO has, however, determined that removing subsection 12(3) would have no impact on the effectiveness of the Regulations, but still satisfy the Committee’s concerns.

The purpose of subsection 12(3) to provide for industrial design applications to be filed electronically is already handled by subsection 3(6) in the “Correspondence” section of the Regulations, which allows for the filing of correspondence (which encompasses industrial design applications) by electronic means of transmission. A review by CIPO of the Regulations indicates that a repeal of subsection 12(3) would have virtually no practical effect on industrial design applicants or on the Office’s administration of the Act.

Implementation, enforcement and service standards

Enforcement and compliance provisions will be unchanged as a result of the proposed regulatory amendment. Accordingly, there is no new compliance and enforcement provisions and no additional costs required to monitor and enforce this regulatory change.

Contact

Brittany Stief
Policy Analyst
Copyright and Industrial Design Branch
Canadian Intellectual Property Office
Industry Canada
50 Victoria
Place du Portage, Phase I
Gatineau, Quebec
K1A 0C9
Telephone: 819-953-1601
Fax: 819-953-6977