In Poseidon, LLC v. Canada (Commissioner of Patents), 2025 FC 225, Poseidon, LLC ("Poseidon") sought an order under section 22 of the Industrial Design Act (the "Act") to reinstate two of its industrial design registrations that expired due to failure to pay maintenance fees. Poseidon contended that the registrations expired because of errors on the part of the Canadian Intellectual Property Office (CIPO).
Since Poseidon's registrations were registered in 2015, the previous version of the Act applied in this case. The current version of the Act came into force in 2018. However, section 22 was not amended as between the previous and current versions of the Act. Section 22 of the Act provides:
22(1) The Federal Court may... at the suit of any person aggrieved by any omission without sufficient cause to make any entry in the Register of Industrial Designs, or by any entry made without sufficient cause in the Register, make such order for making, expunging or varying any entry in the Register as the Court thinks fit, or the Court may refuse the application.
The Court noted that "there is little jurisprudence on a proceeding under section 22 in the circumstances of this case – namely a party seeking to reinstate registrations that expired due to the non-payment of maintenance fees". In this regard, the Court applied an earlier decision in deciding to treat the proceedings under section 22 of the Act like an appeal under section 56 of the Trademarks Act, thus allowing the Court to consider new evidence. Notably, the Court concluded that:
Based upon the direction in Rothbury, Hilton and Clorox and the wording of section 22, I accept that the Court has jurisdiction to rectify an entry in the Register of Industrial Designs that is made "without sufficient cause" if there is material new evidence that is "sufficiently substantial and significant" and "of probative value" (Clorox at para 21; Hilton at para 53). Meaning that if the "expired" notation was made "without sufficient cause" and there is material new evidence to support a "without sufficient cause" finding, then section 22 gives the Court jurisdiction to rectify the Register.
In reviewing the evidence in this case, the Court stated that it did not find evidence that the maintenance fees were paid and that the evidence showed that the failure to pay the fees was due to human error on the part of Poseidon's agents and not due to any failure of the CIPO's processes or systems. Accordingly, the Court concluded that there was no material new evidence to support a finding that it should exercise its jurisdiction under section 22 to rectify the Register, and dismissed the action.
This decision provides guidance in the scope and operation of section 22 of the Act and how an expired industrial design registration may, in certain circumstances, be potentially reinstated under this provision.
The decision can be found here.
Request to Reinstate Expired Industrial Design Registrations Dismissed by the Federal Court
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