Joining the Hague Agreement and Modernizing Canada's Industrial Design Regime — An Overview
Canada is poised to accede to the Hague Agreement and significantly modernize Canada's industrial design regime. By joining the Hague Agreement, Canadian businesses and innovators will have access to an efficient and effective means of protecting their industrial designs around the world. Moreover, a modernized industrial design regime will lower the cost and increase the ease of doing business for companies looking to protect their industrial designs in Canada.
The Hague Agreement means key benefits for businesses:
- One application, one payment, one currency, one place – Applicants can apply for industrial design protection in multiple countries through one application, with fees paid in one currency through a single transaction with the World Intellectual Property Organization (WIPO).
- Simpler rights maintenance and management – Registered design owners have access to a streamlined mechanism for maintaining and managing industrial design rights in multiple jurisdictions.
Modernizing Canada's industrial design regime also has key benefits for businesses:
- Increased Term of Protection – The maximum term of protection for industrial designs is increased from 10 to 15 years.
- Less Red Tape – Application and filing date requirements have been simplified and streamlined. There are also increased flexibilities for error correction, appointment of agents and a representative for service.
- Enhanced E-Services – Improved e-filing interface for clients, including enhanced functionalities and new services.
Canada's accession to the Hague Agreement requires significant changes to Canada's industrial design regime. The Industrial Design Act (the Act) was amended in 2014 and the revised Industrial Design Regulations (the Regulations) are now finalized and have been published in the Canada Gazette, Part II. CIPO is also revising the Industrial Design Office Practice Manual (IDOP) and developing improved e-services for clients.
Canada's accession to the Hague Agreement and the rest of the changes to Canada's industrial design regime will come into force on November 5, 2018.
The Hague Agreement provides a mechanism for acquiring, maintaining and managing design rights in member countries and intergovernmental organizations through a single international application filed with the International Bureau of WIPO.
The Hague Agreement allows users to save time and money by enabling them to easily and efficiently apply for design protection in multiple markets, as a single international application replaces a whole series of applications which would have been sent to different national (or regional) offices.
Over 50 countries are now party to the Geneva Act of the Hague Agreement, including Canada's major trading partners such as the United States, the European Union, Japan and South Korea.
Changes to the Industrial Design Act
The Act was amended in 2014 to enable Canada to accede to the Hague Agreement and to modernize Canada's industrial design regime. This was the first substantive update of the Act since 2001.
Notable amendments include:
The Register of Industrial Designs
The new Act clarifies that a certified copy of an entry the Register of Industrial Designs is admissible evidence in any court.
In addition, any error may be corrected within six months, if the mistake is obvious from documents in the Minister's possession. Previously, corrections were limited to clerical errors.
Codification and Modernization of "Novelty Test"
This provision codifies the Supreme Court test for "original design" and modernizes the term to "novel design", which is aligned with international terminology.
This new provision sets a maximum outer limit of 30 months for making an application available to the public.
Increased Term of Protection
The maximum term of exclusive right is increased from 10 years to 15 years.
For more details, consult the amended Act.
Changes to the Industrial Design Regulations
These Regulations facilitate Canada's accession to the Hague System, carry out the amendments that were made to the Act, and further modernize Canada's domestic industrial design regime. Highlights of the changes in the Regulations include:
Electronic communications will be deemed received 24/7, regardless of whether the Office is open or closed to the public.
An applicant no longer needs to provide signed authorization to appoint an agent. The previous requirement to have a representative for service, in the case of foreign applicants, has been removed.
Application requirements have been simplified, for example:
- the prescribed application form is no longer required;
- the description is now optional because the application is deemed to relate to all four features of the design (shape, configuration, ornamentation and pattern) unless specified in a statement of limitation;
- designs no longer need to be shown applied to a finished article; and,
- applications are no longer limited to a single environmental view.
A new provision allows a divisional application to be filed for any design disclosed in a previously filed application, including in environmental views.
Filing Date Requirements
Filing date requirements have also been simplified to align with international standards. The title, description and complete mailing address are no longer required. To obtain a filing date, applicants need only to provide:
- an indication that registration of a design is sought;
- a means of identifying the applicant;
- contact information; and,
- a representation of the design.
Hague Applications and Transitional Provisions
The Regulations contain specific provisions that apply only to Hague applications that designate Canada, received from WIPO. Transitional provisions outline how the Office will process an application received before the coming into force.
For more details, consult the new Regulations.
A New Industrial Design Office Practice Manual
To bring these changes into force, CIPO has revised the IDOP, which sets out how CIPO will operationalize the regulatory and legislative changes necessary for Canada to accede to the Hague Agreement. The new IDOP also includes various elements which support the modernization of Canada's industrial design regime and the delivery of improved services for clients.
For more details, consult the new IDOP.
CIPO is also working with clients to improve our on-line services and enhance the user experience. Updates to the e-services interface will be delivered in two releases.
The first release will be delivered on November 5, 2018 with the launch of an improved e-filing interface with new functionalities. This will include the capability to submit images in colour, and allow for a greater number of file formats, including PDF, JPEG, TIFF, and GIF. In addition, we have simplified the filing process by streamlining some portions of the e-filing application.
The second release will follow later in 2019 and will offer new online services such as a platform for electronic correspondence between CIPO and its clients, and the electronic submission of amendments.
- Amended Industrial Design Act
- Canada Gazette, Part II
- Backgrounder on new Industrial Design Regulations
- New Industrial Design Regulations
- New Industrial Design Office Practice Manual
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