Canada: Canada Overhauls Its Industrial Design System

On November 5, 2018, extensive changes to Canada's industrial design system will come into effect. These changes are being implemented through amendments to the Industrial Design Act (Act), the Industrial Design Regulations (Regulations) and the Industrial Design Office Practice Manual (Practice Manual). The changes will be effective for any design applications filed on or after November 5, 2018.

ACCESSION TO THE HAGUE AGREEMENT

Many of the changes to Canada's industrial design system are being made in order to facilitate Canada's accession to the Hague Agreement. By way of background, the Hague Agreement is an international treaty that provides a system for acquiring and managing industrial design rights in member countries through a single international application filed with the World Intellectual Property Organization's International Bureau.

IMPLEMENTING THE HAGUE AGREEMENT

The Regulations contain provisions dealing with Hague applications and Hague registrations (i.e., applications filed in Canada pursuant to the Hague Agreement and registrations that issue from such applications). The following are particularly noteworthy:

  • A Hague application's filing date will be the date of the corresponding International Registration.
  • A Hague application may contain up to 100 designs of the same class under the Locarno system. However, the acceptability of such designs in a single application would be determined by the individual national offices.
  • A Hague application is examined only for formality requirements and subsequently registered. Any substantive examination of the International Registration is conducted by the national offices designated by the applicant.
  • If the Industrial Design Office is satisfied that a design in a Hague application is registrable, it will send a statement of grant of protection to the International Bureau, and the design will be deemed to be registered in Canada.
  • Although Hague registrations are recorded in the International Register, they will not be recorded in the Canadian Register, and Hague registrations will not be republished in the Canadian online industrial design database.

TERM

Currently, a Canadian industrial design registration expires 10 years after the date of registration. For applications filed on or after November 5, 2018, the term of any registration that issues from such an application will end on the later of 10 years after the date of registration and 15 years after the filing date of the application.

MAINTENANCE FEES

Currently, a maintenance fee must be paid before five years from the registration date in order to extend the registration term for the full 10 years. The Regulations will continue this system with the exception that the payment of the maintenance fee will cover the maximum remaining term of the design registration.

PUBLICATION OF PENDING APPLICATIONS

Under the current system, an application is kept confidential by the Industrial Design Office unless and until a registration is issued. National applications filed after November 5, 2018 will be made available to the public either when the design is registered or 30 months from the earliest priority date (whichever occurs first), or if there is no claim to priority, 30 months from the Canadian filing date.

RECORDAL OF TRANSFERS

The Industrial Design Office will register a transfer of an application or registered design upon receiving a written request. A copy of an assignment document or other form of evidence is no longer required if the request is made by the applicant or the registered proprietor. However, some form of evidence of transfer will be required if the request is filed by the transferee.

Importantly, the new Act specifies that a transfer of a registered design that is not registered with the Industrial Design Office is void against a subsequent transferee if the transfer to the subsequent transferee has been registered. Therefore, in view of this new provision, it would be strongly recommended to register all transfers.

It should also be noted that any transfer of ownership of a Hague application or registration may be recorded only before the International Bureau.

DESIGN REGISTRATIONS

The Industrial Design Office will no longer issue a certificate of design registration and instead will issue a notification when the design is registered along with a copy of the application.

DESCRIPTION AND DRAWINGS

There is no longer a requirement for an application to include a written description of the design. However, the new Practice Manual states that all features of a design (i.e., shape, configuration, pattern. and ornament) shown in the figures will be deemed to be part of the design, unless the application includes a statement limiting the design to one or more specific features. Any excluded design features may also be illustrated in the figures by means of dotted or broken lines, blurring or with contrasting colour. Thus, it would be recommended to carefully examine all figures of an application prior to filing to determine if any statements of limitation should be included.

Under the revised Practice Manual, applications will be permitted to contain more than one figure depicting the design in its environment.

Further, a design application may include photographs and/or graphic reproductions, and so an applicant is no longer limited to relying on one or the other.

DIVISIONAL APPLICATIONS

The new Regulations maintain the requirement that an industrial design application must be limited to one design, or variants of a design, applied to a single article or set. The Regulations, however, clarify variants to be designs applied to the same article or set and not differing substantially from one another. This definition would appear to broaden the scope of the "one design" requirement.

Also, applicants can now file divisional applications for any content that was disclosed in the earliest original application on its filing date. This means that other designs disclosed in the original application, including designs depicted as environment, could form the basis of a divisional application, even if not applied for in the earliest original application.

A divisional application must be filed within two years of the filing date of the earliest original application. However, this time limitation does not apply in situations where the divisional application is filed in response to a requirement issued by the Industrial Design Office to limit an application to one design. Even in this instance, any divisional applications must be filed (1) within six months of the original application and (2) before the original application is registered.

EXAMINATION – EXTENSIONS OF TIME

Consistent with current practice, the Industrial Design Office will send out a report outlining any objections to the registration of a design. Under the Regulations, the deadline to reply to such a report will be shortened to three months, which can be extended only once and by six months.

ADVANCED EXAMINATION

The Regulations codify existing practice by introducing a provision to request advanced examination of an application on payment of a prescribed fee.

DELAY OF REGISTRATION

Under existing practice, a request for delay of registration can be made by the applicant at any time before registration, so long as the Industrial Design Office has enough time to process the request. This provision will remain, but the Regulations will impose a time limit for requesting a delay of registration. Under the Regulations, an application can only be delayed until 30 months after the filing date or, if applicable, the priority date. Moreover, a request for delay of registration cannot be made for a design that is the subject of a Hague application.

NOVELTY

A new section of the Act, added to deal with novelty of a design, introduces an important change. More specifically, the previous requirement for "originality" of a design as a condition for registration has been removed and replaced with an arguably lower standard of "novelty."

In addition, the so-called "grace period" permitting an application to be filed up to one year after a public disclosure of a design by the applicant will now be determined relative to the priority date instead of the filing date. This is a welcome change particularly for applicants that regularly exhibit at tradeshows and the like.

Another welcome change to the Regulations will allow applicants to seek protection for similar designs if the respective applications are filed within 12 months of each other. Under current practice, when similar designs are submitted in applications filed on different dates, the registration of the earlier application may be citable against the later-filed application for lack of novelty. The new Regulations provide that if the filing date of the later application is no more than 12 months after the filing date of the earlier application, the earlier application will not be considered part of the prior art for the later application.

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© 2018 Blake, Cassels & Graydon LLP.

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