Joining the Hague Agreement and Modernizing Canada's Industrial Design Regime
From: Canadian Intellectual Property Office
On November 5, 2018, Canada acceded to the Hague Agreement Concerning the International Registration of Industrial Designs (Hague System) and implemented changes to significantly modernize Canada's industrial design regime.
The Hague System provides a mechanism for acquiring, maintaining and managing design rights in multiple countries through a single application filed with the World Intellectual Property Organization (WIPO).
On this page, you will find the following sections:
- Resources for applicants
- Benefits for businesses
- Hague System explained
- Changes to the Industrial Design Act
- New Industrial Design Regulations
- A New Industrial Design Office Practice Manual
- Enhanced e-services
- Learn more about the changes to Canada’s industrial design regime
- Hague System: information and tools
Resources for applicants
The WIPO provides excellent resources for prospective applicants, including the following:
- the Hague Express Database: a searchable tool that contains information on new international registrations, renewals and modifications affecting existing international registrations
- the Hague System Fee Calculator: a tool that allows you to quickly estimate application or renewal fees in Swiss francs (CHF)
- the E-filing portfolio manager
Benefits for businesses
Joining the Hague Agreement means 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 System means key benefits for businesses:
- One application, one payment, one currency and one place: Applicants can apply for industrial design protection in up to 69 countries through one application and pay fees in one currency through a single transaction with the 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 through the WIPO.
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, the appointment of agents and representatives for service.
- Enhanced e-services: The e-filing interface for clients is improved, which includes enhanced functionalities and streamlined processes.
To accede to the Hague Agreement, significant changes were made to Canada’s industrial design regime. The Industrial Design Act (the Act) was amended in 2014, and new Industrial Design Regulations (the Regulations) were finalized in the Canada Gazette, Part II, in 2018. The Canadian Intellectual Property Office (CIPO) also revamped the Industrial Design Office Practice Manual (IDOP) and significantly improved e-services for clients.
Hague System explained
The Hague System allows users to save time and money by providing a simpler, faster and more effective way to apply for industrial design protection in multiple markets, as a single international application replaces a whole series of applications that would otherwise have been sent to different national (or regional) offices.
There are 69 contracting parties to the Hague Agreement, including Canada's major trading partners, such as the United States, the European Union, Japan and South Korea. A complete list of contracting parties is available on the WIPO website.
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 following:
Increased term of protection
The maximum term of exclusive right is increased from 10 years to 15 years.
The Register of Industrial Designs
The amended Act clarifies that a certified copy of an entry in the Register of Industrial Designs is admissible evidence in any court.
In addition, any error made in the Register of Industrial Designs may be corrected within six months of the entry if the error is obvious from documents that are in the Minister's possession. Previously, corrections were limited to clerical errors.
Codification of the "novelty test"
This provision codifies the Supreme Court test for "originality" of a design and uses the term "novelty" to describe a design, which is aligned with international terminology.
Applications are now made available to the public at registration or 30 months from the earliest priority date, whichever comes first.
For more details, consult the Act.
New Industrial Design Regulations
The new 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 changes in the Regulations include the following:
Electronic communications will be deemed received 24/7, regardless of whether the office is open or closed to the public.
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 provide the following:
- an indication that registration of a design is sought
- a means of identifying the applicant
- contact information
- a representation of the design
Application requirements have been simplified. For example, the following changes have been made:
- 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
- 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.
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.
International registrations and transitional provisions
The Regulations contain specific provisions that apply only to international registrations that designate Canada and that are received from the 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 revamped the IDOP, which sets out how CIPO operationalizes the above-noted legislative and regulatory changes. The new IDOP also includes various elements that support the modernization of Canada's industrial design regime and the delivery of improved services for clients.
CIPO has collaborated closely with stakeholders in the drafting and finalization of the revamped IDOP.
For more details, consult the new IDOP.
CIPO has been working with clients to improve our online services. Updates to the e-services interface are being delivered in several stages.
The first release, delivered on November 5, 2018, includes the launch of an improved e-filing interface with new functionalities. This includes the capability to submit images in colour and to allow for a greater number of file formats, including PDF, JPEG, TIFF and GIF. In addition, we have simplified the filing process by streamlining sections of the e-filing application.
Additional enhancements will follow later in 2019 and will include a new function for the electronic submission of amendments, along with a platform for electronic correspondence between CIPO and its clients.
Learn more about the changes to Canada’s industrial design regime
- Amended Industrial Design Act
- New Industrial Design Regulations
- New Industrial Design Office Practice Manual
Hague System: information and tools
- Main features and advantages
- Hague guide for users
- Hague e-filing portfolio manager
- Hague Express Database
- Fee calculator
- Legal framework
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