On January 28, 2014, the Government of Canada tabled a number of intellectual property law treaties in Parliament to harmonize Canada's patent, trademark and industrial design laws with international laws. Among the treaties tabled was the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague System), adopted on July 2, 1999. The Hague System provides a mechanism for acquiring, maintaining and managing design rights in a number of contracting countries through a single application to the World Intellectual Property Organization (WIPO), filed in one language, with one set of fees.
Industrial Design Act
In order to enable Canada to accede to the Hague System, Canada's Industrial Design Act, RSC, 1985, c. I-9 (Act) was amended by two federal bills in 2014 and 2015: Economic Action Plan 2014 Act, No. 2; and Economic Action Plan 2015 Act, No. 1, respectively. The following are notable amendments to the Act:
- The requirement that "a drawing or photograph of the design" be submitted has been replaced with the broader term "representation of the design";
- The previous requirement that the design not be "confounding" with a design already registered has been replaced with the term "novelty" to describe a design, which is aligned with international terminology; and
- The maximum term of exclusive right increased from 10 years beginning on the date of registration to the later of 10 years from the registration date and the end of 15 years after the filing date of the application.
The amendments to the Act did not come into force until new Industrial Design Regulations were effective.
Industrial Design Regulations
On November 5, 2018, Canada acceded to the Hague System and enacted the new Industrial Design Regulations, SOR/2018-120 (New Regulations). The New Regulations carry out the amendments that were made to the Act and further modernize Canada's industrial design laws.
Notable provisions of the New Regulations include the following:
- Application requirements have been simplified. For example, the prescribed application form is no longer required, and the description is now optional;
- Filing date requirements now align with international standards. For example, title, description and complete mailing address are no longer required, and applicants need only to provide an indication that registration of a design is sought, a means of identifying the applicant and contact information, and a representation of the design for which the applicant has applied; and
- An applicant no longer needs to provide signed authorization to appoint an agent, and the previous requirement for foreign applicants to have a representative for service has been removed.
How can an international application for an industrial design be registered in Canada?
The filing requirements for Hague System applications are prescribed by the International Bureau of WIPO (Bureau). Upon receipt of an international application, the International Bureau of WIPO reviews the application to ensure it complies with the prescribed requirements. If the Bureau finds that the international application conforms to the applicable requirements, it registers the industrial design in the International Register. If the application does not comply with the applicable requirements, the applicant is invited to make the required corrections within three months of being notified.
In accordance with the Hague System, an international application filed with WIPO, and designating Canada as a country in which the applicant seeks protection, will be examined in Canada by the Canadian Industrial Design Office (CIDO), without further action or payment by the applicant. If the international application passes this examination stage (i.e., if CIDO does not issue a Notification of Refusal within 12 months of the publication of the international registration by the Bureau), the Hague System application will register as an enforceable Hague System registration in Canada. If a Notification of Refusal is issued, the applicant will have an opportunity to respond to such Notification of Refusal just as it would for a domestically-filed application.
The Canadian filing date of a Hague System application corresponds to the date of the international registration. The date of the international registration is the filing date of the international application (unless it contains any irregularities entailing a postponement of the filing date). The Canadian publication date of a Hague System application will be the same date on which the international registration is published in the International Designs Bulletin, which is managed by the Bureau.
The term of industrial design protection for a Hague System registration begins on the date of national registration and ends on the later of:
- 10 years after the date of national registration; and
- 15 years after the filing date of the Hague System application, unless the expiry date of the international registration (15 years after the international registration date) is earlier.
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