By definition, Industrial Designs are the visual features of shape, configuration, pattern or ornament, or any combination of these features applied to a finished article. Basically, it is about how things look. For example, the specific shape or decoration of a table. Further, a design is not registrable if it is composed only of features that are dictated solely by a utilitarian function or if it is contrary to public morality or order. In other words, it must be an original design in order to be protected. But how does one prove originality? Fortunately, Canada’s Industrial Design Act exists to answer this question, among others, and provide direction regarding the requirements and process for registering a design. In November 5, 2018, amendments to this Act came into force, which enabled Canada to accede to the Hague Agreement regarding international applications to protect designs.
The Hague Agreement governs the international registration of industrial designs. First adopted in 1925, the Agreement effectively establishes an international system – the Hague System – that allows industrial designs to be protected in multiple countries or regions with minimal formalities.
Below are some notable changes that those looking to register an Industrial Design in Canada should be aware of.
Term of Protection
Prior to the amendments in November 2018, the term of protection was ten years from the registration date. Now, Section 10 (1) provides:
….the term limited for the duration of an exclusive right
(a) begins on the later of the date of registration of the design and the prescribed date, referred to in subsection 8.3(1), on which the application for the registration of the design is made available to the public; and,
(b) ends on the later of the end of 10 years after the date of registration of the design and the end of 15 years after the filing date of the application.
The prescribed date references the new procedure of publication of design applications 30 months after the filing date or convention priority date. The prescribed date is the later of the registration date or 30 months after the filing date of the application for registration or, if a request for priority is made in respect of the application, the earliest filing date of a previously regularly filed application on which the request for priority is based.
Codification of Novelty Test
Previously, in order to be registrable, a design had to be “original”. The amendments codify the Supreme Court test for "originality" of a design and uses the term "novelty" to describe a design, which is in alignment with international terminology. Moreover, the one-year grace period for prior disclosure now extends from the application's priority date. As a result, when priority is claimed, any public disclosure by the applicant of the applied-for design in the year preceding the earliest priority date will not be citable against the application.
8.2 (1) A design in an application for the registration of a design is novel if the same design, or a design not differing substantially from it, applied to a finished article that is the same as or analogous to the finished article in respect of which the design is to be registered,
(a) has not been disclosed, more than 12 months before the priority date of the design in the application, in such a manner that it became available to the public in Canada or elsewhere, by
o (i) the person who filed the application,
o (ii) that person’s predecessor in title, or
o (iii) a person who obtained knowledge of the design in the application, directly or indirectly, from the person who filed the application or their predecessor in title;
(b) has not been disclosed by any other person, before the priority date referred to in paragraph (a), in such a manner that it became available to the public in Canada or elsewhere; and
(c) subject to the regulations, has not been disclosed in an application filed in Canada for the registration of a design whose priority date is before the priority date referred to in paragraph (a).
Abandonment and Reinstatement
An abandoned application may be reinstated provided that the applicant makes the request within six months after the day on which the application is deemed to be abandoned. Such request must be accompanied by the following:
(i) A response, in good faith, to the outstanding report; and
(ii) The reinstatement fee of $200.
If these requirements are not met within the prescribed period, the application will become "inactive" and no further action can be taken.
The time permitted for Office Action responses is down to three months.
Only one six month extension of time is permitted.
Advanced Examination and Delayed Registration are available.
Divisional applications provide more flexibility than before
An applicant may now file a divisional application for any design that was originally disclosed – not merely claimed – in the parent application as filed. For example, the Canadian Industrial Design Office has indicated that the applicant is able to file a divisional application with portions of the design in solid lines that were shown in dotted lines in the parent application as originally filed, and vice versa. Divisional applications also remain available for cases where the Canadian Industrial Design Office issues an Examiner's Report objecting to an application as containing more than one design.
Canada can now be designated in international applications filed under the Hague System for the International Registration of Industrial Designs
The Canadian Industrial Design Office will treat each design included in the international application as a separate, so-called "Hague application", which will be substantively examined. If the Canadian Industrial Design Office does not issue a Notification of Refusal within one year of the publication of the international registration, the Hague application(s) will automatically register as enforceable Hague registration(s) in Canada. If a Notification of Refusal is issued, the applicant will have an opportunity to respond in the same manner as it would to an Examiner's Report issued for a domestically filed application.
Although the above changes were enacted to comply with the Hague Agreement, they also create a more efficient, clear and simple application process which is an added benefit to applicants applying for design protection both in Canada and internationally.
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