Canada’s Intellectual Property Firm

The Date is set: this November Canada implements the Hague Agreement and rolls out a modernized industrial design regime

Authored byChristine Genge

On June 27, 2018 the Government of Canada published the new Industrial Design Regulations in the Canada Gazette and set November 5, 2018 as the date on which amendments to the Industrial Design Act and Regulations will come into force. This will be the first of several major changes to Canada’s intellectual property regime expected to come into effect over the next year.

The amendments to the Industrial Design Act and Regulations will allow applicants to file international design applications designating Canada under the Hague Agreement. Also advantageously for applicants, the modernization of the industrial design regime in Canada vastly expands the options for illustrating and claiming designs, provides a route to protecting designs originally disclosed but not claimed, and abolishes a set form for an application.

The Canadian Industrial Design Office is also in the process of amending the Industrial Design Office Practice Manual (IDOP). Once amended, the IDOP will provide detailed information on how to file and prosecute an application for registration of an industrial design in Canada under the new regime.

A wide ranging process to amend Canada's intellectual property regime began on January 28, 2014 when the Government of Canada simultaneously tabled five intellectual property law treaties in Parliament to harmonize Canada’s patent, trademark and industrial design law with many of its most important trading partners around the world. The treaties include:

1. The Madrid Protocol which provides trademark owners with means of protecting their marks in multiple countries, in part by enabling applicants to file a single international application and designate those member countries in which the applicants seek protection for their marks.

2. The Singapore Treaty which harmonizes certain administrative trademark registration procedures.

3. The Nice Agreement which provides a comprehensive classification system for goods and services for use in registering trademarks, simplifying the application process among member countries.

4. The Hague Agreement which 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.

5. The Patent Law Treaty which harmonizes several formal procedures in respect of national and regional patent applications and patents – such as the requirements to obtain a filing date for an application and the form and content of applications –aiming to make such procedures more user-friendly.

Since the treaties were tabled several years ago, Canada has seen numerous public consultations and the drafting and publication of amending legislation and regulations for each of the Patent Act, the Trademarks Act and the Industrial Design Act. With yesterday’s announcement, the Government has now revealed that the first of the treaties to be implemented will be the Hague Agreement.

Further details concerning the new Industrial Design Act and Regulations are described in our IP Updates of October 28, 2014June 19, 2017 and December 12, 2017. For further information, please contact any member of our Industrial Designs Group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.