Canada Modernizes its Industrial Design Regime to Implement the Hague Agreement

On November 5, 2018, extensive changes to Canada’s Industrial Design Act (Act), Industrial Design Regulations (Regulations) and Industrial Design Practice Manual (Manual), came into effect (previously reported in E-TIPS®). Many of these changes were made in order to facilitate Canada’s accession to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement).

Under the Hague Agreement, an international application is first filed with the World Intellectual Property Office (WIPO) where the application is reviewed for formalities.  If found to be compliant, the application is then allowed to proceed to international registration. Under the revised Regulations, this registration enters the Canadian national stage as a Hague application and is examined substantively by the Canadian Intellectual Property Office (CIPO) under the Act. The Hague application, if allowed, extends the effect of the international registration to Canada.

In order to give effect to this new registration scheme, significant amendments were required to be made to both the Act and Regulations.  Some notable amendments include:

Extending of the term of registration from 10 to 15 years;

Codifying a “novelty” test to replace the previous “originality” test;

Modifying the publication date of pending applications to be the earlier of the registration date or 30 months from the earliest priority date; and

Clarifying that certified copies of entries found in the Registrar of Industrial Designs are admissible as evidence in any court.

Complementing the updated Act and Regulations, the revised Manual is now in effect. For more information, please see CIPO’s website or contact us.

Summary By: Jae Morris