On December 9, 2017 Canada’s Governor-in-Council took the formal step of publishing proposed new Industrial Design Regulations (the proposed Regulations) in the Canadian Gazette. A 30-day consultation period has been set, ending January 9, 2018.
Canada’s Industrial Design Act and Regulations are being amended to allow Canada to join the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement). The Hague Agreement provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees, resulting in cost and time savings.
The new Industrial Design Act has been finalized. With the publication in the Canada Gazette, the text of the proposed Regulations is now one step closer to being finalized. The most recent forecast from the Canadian Intellectual Property Office (CIPO) suggests that the new law implementing the Hague Agreement will come into force in early 2019.
The proposed Regulations provide considerable detail outlining how Canada will adhere to the Hague Agreement and closely track the version published for consultation on June 19, 2017, which we reported on here, with the differences substantially being formal in nature. However some more substantive changes were made in response to the consultation. The proposed Regulations provide applicants more flexibility in their industrial design filing strategy over the current regime. Highlights include:
Designs disclosed but not originally claimed can now be protected: The proposed Regulations provide that a design disclosed but not claimed can be pursued by filing a divisional application for that design. Under the current regime, there is no mechanism for pursuing a design not claimed in the original application. However, the timeframe for filing divisional applications will be more limited than in the current regime.
More options for illustrating and claiming the design: The proposed Regulations allow the application to contain both drawings and photographs, in contrast to the current regime where either, but not both, are permitted. There is also the possibility of the representation of the design being any other visual reproduction specified by CIPO. The proposed Regulations continue the practice of allowing dotted or broken lines to identify unclaimed features, but now also allows the use of colouring for this purpose, which was not in the June consultation document.
Set form of the application abolished: The form of the application is not mandated in the proposed Regulations, eliminating the need for the application to contain proscribed statements. A description of the design has also been made optional.