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Protection in Canada Q&A Continued
What is the procedure for registering a design?
An industrial design application conforming to the Industrial Design Rules is filed, with the filing fee, in the Industrial Design Office. Following filing, the application is examined by a Government-employed Examiner. The application is examined for form and content, degree of originality, and possible conflict with previously registered or co-pending designs. It is frequently necessary to respond to one or more Examiner's Reports before the application is allowed. Voluntary amendments can be made to an application at any time prior to registration of the design as long as the subject matter is not substantially changed. Registration follows allowance relatively quickly (usually two to three weeks) without payment of further fees. Although the Industrial Design Office does consider requests for accelerated examination, under an International Convention registration will not be issued until six months after the date of the application (or the priority date, if the application is based on an application in another country).
What is the cost of preparing and filing an industrial design application?
Typically at least about $2,000, less in a few cases, rarely more than $3,000, including the Government filing and examination fees. (Note that if there are several variants of a design, it may not be possible to cover them all in a single application). Drawings expense is highly variable; see the comments on the preceding page. If a subject-matter search is made before filing, add about $2,000 to the total cost.
Fees incurred in responding to Examiner's Reports are highly variable, but typically may be $500 - $1,000. In a few cases, the application is allowed without an Examiner's Report.
Is any marking required on an article protected by an industrial design registration?
Articles displaying or embodying a registered industrial design should be marked in order that the design registration be fully protected. If all, or substantially all, of the articles to which the registration pertains were not marked and an infringer establishes that it was not aware and had no reasonable grounds to suspect that a design was registered, then the Courts are limited to issuing an injunction in an infringement action. Damages for infringement cannot be awarded in such cases. The marking required, to ensure that remedies other than an injunction are possible, is the capital letter "D" in a circle and the name, or the usual abbreviation of the name of the proprietor of the design. The marking must be on the articles themselves or on labels or packaging associated with the articles.
Should a preliminary search be made?
A preliminary search can be made and should be made if the proprietor is not generally knowledgeable about the state of the art to which the design pertains. However, since designs tend to be inherently "original" (whereas inventions are more constrained by the principles of physics or chemistry and are therefore more likely to be duplicated), it is relatively uncommon that a preliminary search reveals an anticipatory earlier design unless the design has been copied from another source. Further, since the cost of preparing and filing an industrial design application is considerably lower than the cost of preparing and filing a patent application, the financial loss is not so great if the search is by-passed, a pertinent prior design is encountered by the Examiner, and the industrial design application does not proceed to registration. So the client may wish to forgo a preliminary search.
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