The one party wrongly blamed the IP office's systems for its failure to pay maintenance fees
The Federal Court dismissed an application to reinstate two expired industrial design registrations, ruling that the non-payment of maintenance fees was due to errors by the applicant's agents rather than failures in the Canadian Intellectual Property Office's (CIPO) systems.
Poseidon, a US-based company specializing in designing and selling construction barges, registered two industrial designs in 2015. Under the Industrial Design Act (ID Act), these registrations required a maintenance fee payment by October 22, 2020, with a six-month grace period ending April 22, 2021. When no payment was received, CIPO marked the registrations as expired on May 12, 2021.
Poseidon claimed that its legal representatives attempted to make the payments in October 2020 but encountered technical issues with CIPO's online payment system. Additionally, they argued that CIPO did not correctly process renewal instructions sent by facsimile.
The Federal Court examined whether it had jurisdiction under s. 22 of the ID Act to amend the Register of Industrial Designs. Section 22 allows the court to rectify omissions or incorrect entries in the register if they were made "without sufficient cause."
Poseidon provided affidavit evidence from its legal counsel and an engineering expert to support its claim that payment attempts failed due to CIPO's systems. However, the court found that Poseidon's arguments were based on hearsay and lacked direct evidence.
The Federal Court found that the evidence did not support Poseidon's claim that CIPO's online payment system prevented the transaction. Screenshots provided by Poseidon's legal counsel lacked timestamps and showed a software version that was not in use on the relevant date. The court concluded that the searches likely took place after the designs expired, explaining the error messages in the screenshots.
Additionally, the court determined that no material evidence showed the successful transmission of payment instructions via facsimile. The facsimile records provided by Poseidon's counsel referenced "patents" rather than industrial designs, suggesting a possible clerical error. Without confirmation that the faxes were successfully received and processed by CIPO, the court could not conclude that the agency had failed in its duties.
The court also rejected Poseidon's request for an order retroactively extending the payment deadline. It referenced s. 10(3) of the ID Act, mandating the automatic expiration of an industrial design registration if the applicant fails to pay maintenance fees on time. The court determined it had no jurisdiction to override this statutory requirement.
The court ultimately dismissed Poseidon's application, finding that the non-payment of maintenance fees was due to errors by Poseidon's agents rather than CIPO's system failures.
