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Modernizing Canada’s industrial design regime: Top 10 changes

On June 27, 2018, the Government of Canada published upcoming changes to the Industrial Design Regulations (IDRs). The revised IDRs amend industrial design practice under the existing Industrial Design Regulations and introduce new provisions to implement the Hague Agreement for international industrial design applications and registrations. The corresponding amendments to Canada’s Industrial Design Act were completed in 2014, but will not come into force until the revised IDRs become effective on November 5, 2018.

Implementation of the Hague Agreement: Top 5 changes

Also known as the “Hague System”, the international registration scheme established by the Hague Agreement provides a pathway for an industrial design applicant to obtain registrations in multiple (participating) countries from a single international application filed with the World Intellectual Property Office (WIPO). In accordance with the Hague System, an international application filed with WIPO is examined for formalities during the international stage; if compliant, the international application proceeds to international registration. Per the revised IDRs, the international registration enters the Canadian national stage as a Hague application and is then examined substantively under the Canadian Industrial Design Act. If allowed, the Hague application becomes a Hague registration in Canada.

The revised IDRs include new sections that apply only to Hague applications and registrations. Here are the top 5 additions to the IDRs for enabling Canada’s implementation of the Hague Agreement:

  • An international registration that designates Canada enters the national stage without further action by the applicant or payment of a fee to the Canadian Industrial Design Office (CIDO).
  • The filing requirements for Hague applications are prescribed by WIPO, not domestic law. CIDO will deem Hague applications to have been filed in accordance with the requirements of Canada’s Industrial Design Act.
  • The Canadian filing date of a Hague application corresponds to the date of the international registration. This is typically back-dated to the filing date of the international application during the international stage. In other words, the international filing date, the international registration date, and the Canadian filing date may all be the same.
  • The Canadian publication date of a Hague application will be the same as the date on which the international registration is published in the International Designs Bulletin managed by the International Bureau of WIPO.
  • The term of industrial design protection for a Hague registration begins on the date of national registration. The term of protection ends on the later of (a) 10 years after the date of national registration and (b) 15 years after the filing date of the Hague application, unless the expiry date of the international registration (15 years after the international registration date) is earlier.

Modernizing industrial design practice: Top 5 changes

The IDRs have also been revised in an effort to modernize Canada’s industrial design practice. Here are the top 5 practice changes reflected in the amended IDRs:

  • A foreign industrial design applicant is no longer required to have a representative for service in Canada. This change impacts all foreign applicants before the Industrial Design Office, whether they proceed by direct applications in Canada or through Hague applications.
  • The format for Canadian industrial design applications has been made more substantive than formal. A submission is no longer required to follow the prescribed form and phrases set out in current Schedule I to be recognized as an industrial design application.
  • An industrial design applicant will now be permitted to file a voluntary divisional application to pursue design elements considered to be part of an environmental view, provided the divisional application is filed within two years of the original parent application’s filing date and the parent application was not subject to restriction.
  • The number of extensions of time to provide a response to an office action has been reduced from two six-month extensions to one. An applicant will no longer be able to delay responding to an office action for a full year.
  • The revised IDRs implement a continuation-type practice permitting industrial design applicants to obtain registrations for similar designs. Under current practice, a later-filed application for an industrial design that is similar to an industrial design shown in an earlier-filed application could be subject to an objection based on a lack of novelty. The revised IDRs now provide that an earlier-filed design application is not prior art to a later-filed application for a similar design filed by the same applicant within 12 months of the earlier application.

The above practice changes will apply to all industrial design applications in Canada, whether filed through the Hague System or not.

By Benjamin Lai and Lisa Melanson

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McCarthy Tétrault LLP

McCarthy Tétrault is a Canadian law firm that delivers integrated business law, litigation services, tax law, real property law, labour and employment law nationally and globally.McCarthy publishes a series of blogs to share information with companies to help them comply and manage their businesses. On the Inside Internal Controls blog we will share some of those blog posts sharing their expertise among others, in the areas of Competition/Anti-trust, Corporate and Commercial Law, Intellectual Property, Privacy, Environmental Law, Technology and Litigation. Read more here
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