August 21, 2018
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In a step toward modernizing its industrial design regime, on June 27, 2018, the Canadian government published the new Industrial Design Regulations (the “Regulations”). These Regulations, and the corresponding amendments to the Industrial Design Act (which were amended in 2014 but are not yet in force), are scheduled to take effect on November 5, 2018.
The proposed changes are necessary in order for Canada to accede to the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”). The Hague Agreement establishes an international registration system, also known as the Hague System, which allows industrial designs to be protected in multiple countries through a single application.
Membership to the Hague Agreement will enable Canadian applicants to register up to 100 industrial designs in over 60 countries or regional associations, a list which includes several of Canada’s major trading partners. Therefore, access to the Hague System is a notable cost-saving mechanism for innovative Canadian businesses, which previously had to retain a local agent to prepare and file an industrial design application in each respective jurisdiction.
Substantive changes to the Regulations include:
Representation before the Canadian Intellectual Property Office — The amended Regulations now allow for an agent, who is no longer required to have a Canadian address, to represent a foreign industrial design applicant so long as the Industrial Design Office (“IDO”) receives a notice of appointment and a postal address for the agent.
Content of the Register — Previously, the content of the Register of Industrial Designs (the “Register”) was undefined. The new Regulations now specify what the Register’s contents should be, including: registration date, name and address of the registered proprietor, particulars of any transfers, etc. Additionally, the IDO has ceased issuing certification of registration and will now simply notify applicants when their design is registered.
Application Requirements — Changes to the Regulations introduce greater flexibility for applicants in an attempt to align the Canadian process with international standards. To name a few, applicants are no longer required to use the prescribed application form and the application is presumed to relate to all features of the design, such that applicants are no longer required to provide a description.
Divisional Applications — The Regulations stipulate that an application can only pertain to one design or to variants. However, applicants may now file divisional applications within two years of the original, regarding any content that was disclosed in that initial application.
Filing Dates — In an attempt to streamline and expedite the process, a title and description are no longer required in order for applicants to secure a filing date. Additionally, if the application is missing required information, the IDO will attempt to notify the applicant. However, it is worth noting that the timeline for submitting missing information or documents has been shortened from three to two months following the application.
Priority Requests — Priority requests must be made within six months of the earliest filing date. The IDO will now remove an applicant’s priority request if the applicant does not provide a copy of their priority document before that deadline.
For more information on any of the above information, please contact Dino Clarizio.
Authors: Dino Clarizio and Samantha Galway