Gowling WLG Canada
The Industrial Design Act is due for an update. Although falling short of earlier stakeholder demands, the update will come courtesy of a set of amendments tabled in the House of Commons on October 23 2014 in Bill C-43, known as the Economic Action Plan 2014 Act 2. Driving the change is the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Once in force, the amended act will serve to align Canada’s laws on industrial designs with international standards and enable Canada and Canadians to participate in international registrations through the Hague Agreement.
The key changes to the Industrial Design Act focus on four areas:
- the registration of industrial designs;
- the priority of applications;
- the grant and duration of exclusive rights; and
- the authority of the governor in council to make regulations under the Industrial Design Act.
Novelty and application publication
The amendments to the Industrial Design Act provisions regarding the registration of industrial designs are significant. In addition to specifying new filing date requirements compliant with the Hague Agreement and removing reinstatement provisions to the as-yet unpublished regulations, the amendments set out new registrability requirements. The majority of the registrability requirements codify existing law and practice. However, the amendment introduces a 'novelty' requirement and a definition of such, which replaces the previous 'originality' test. Importantly, the 12-month grace period permitting applications to be filed following a public disclosure is now tied to the priority date rather than the filing date. Although in many ways similar, the novelty requirement replaces the existing awkward test that prevents an applicant from registering certain related designs unless the designs are registered by the Design Office on the same day. The practice of relating prosecution in the Design Office to ensure same-day registration to avoid a refusal may disappear, but the new test may still leave an applicant’s earlier filed but not yet registered application citeable against its later filed application for similar subject matter. It may be necessary to have related designs filed on the same priority date.
At present, design applications become available to the public when a design is registered. While this is the case under the amendments, design applications will also be made available to the public at a prescribed date unless the application is withdrawn.
Priority: domestic priority now available
The second major change – amendments with respect to the priority of applications for registration of a design – is found in Section 105 of Bill C-43. This section sets out the process for assigning a priority date to an application and for making a request for priority where there is one or more previously regularly filed applications. The change also permits priority claims to earlier filed Canadian applications, whereas previously a priority claim could be made only to applications filed in respect of a 'foreign country' as defined in the Industrial Design Act.
The third major change to the Industrial Design Act relates to the duration of the exclusive right in relation to the design given to the proprietor on registration. The term of this exclusive right has been amended under Bill C-43 to be the later of 10 years after the date of registration of the design or the end of 15 years after the filing date of the application. Maintenance fees will remain payable.
Finally, the fourth major area of change relates to the authority of the governor in council to make regulations under the Industrial Design Act. Numerous powers are provided to regulate certain content of a design application, including substantive content which defines the specific design, as well as aspects of application processing and examination. These amendments expand the powers of the governor in council in this regard.
Changes are also made to transfers, electronic forms and means and transitional provisions.
The changes will come into force on a date to be fixed by the governor in council. While Bill C-43 is expected to move quickly through Parliament and with relatively few amendments, it will take some time to prepare the new regulations and prepare the Design Office for the changes. If recent changes to the Trademarks Act are any guide, the changes are unlikely to be in force until after 2015.
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