On December 16, 2014 amendments to the Canadian Industrial Design Act received royal assent. These amendments were included in omnibus Bill C-43 known as the Economic Action Plan 2014 Act, No. 2. The amendments are not yet in force, but implementation will likely coincide with the amendments to the trademarks regime in late 2015-2016.
The Industrial Design Act has long been criticized as being vague, internally inconsistent and generally poorly drafted. The recent amendments will clarify and rationalize industrial design practice in Canada and bring it into alignment with international standards. This will pave the way for Canada to participate in the international industrial design system under the Hague Agreement. The Hague Agreement allows applicants to file a single application in one language with one set of fees and obtain industrial design protection in over 60 countries.
Novelty and Priority Claims
At present, an industrial design is registrable in Canada if it is “not identical with or does not so closely resemble any other design already registered as to be confounded therewith” (Section 6(1)). This language has been interpreted as requiring that a design must be “original” in order to qualify for registration, but the test has the unfortunate effect of preventing the same applicant from registering related designs unless the registrations are all issued by the Office on the same day. Moreover, while an applicant could claim priority from a foreign application filed within the previous 6 months, the test for “originality” did not take into account the priority filing date. As a result, a similar design registered in Canada between the priority filing date and the Canadian filing date would result in refusal of the second application notwithstanding the fact that the second application claimed priority from an earlier date than the intervening registration. Perversely, this remained true even where both applications were filed by the same applicant. In other words, an applicant’s earlier applications could be used to refuse their later applications to register variations of the same design.
The amendments will replace the previous criteria with a “novelty” test. An industrial design will now be registrable unless “the same design or a design not differing substantially from it” has been disclosed by the applicant (or predecessor in title) more than 12 months before the priority date or by any other person before the priority date. As a result of this amendment, the registrability criteria will be tied to the priority date of the application, rather than the Canadian filing date. It will also be possible for an applicant to claim priority from an earlier application filed in Canada; instead of only from an application filed in a “foreign country”. This will give Canadian applicants greater flexibility in their Canadian filing strategy.
Term of Protection
The amendments will effectively extend the duration of the proprietor’s exclusive rights under an industrial design registration by approximately 4 years. At present, the maximum term of an industrial design registration is 10 years from the registration date. Under the amendments, the term will be the greater of: (a) 15 years from the filing date of the application; or (b) 10 years from the registration date. Since a typical industrial design application currently takes about 1 year after filing to mature to registration, this amendment will effectively add about 4 years to the overall term of protection in most cases.
At present, industrial design applications are only made available to the public after they mature to registration. If the application is refused, it is never released to the public. The amendments will establish a system for publishing pending industrial design applications. This will allow interested parties to search for and track the progress of industrial design applications filed by others. The publication mechanism and exact timing of publication will be established by regulation.
The content of an industrial design application will be amended to require only a “representation of the design”. This is broader than the present requirement for a “drawing or photograph of the design” and is expected to allow broader variants of a design to be contained within a single application. The amendments also give the Governor in Council greater authority to make regulations under the Industrial Design Act, including the explicit authority to establish a procedure for examining applications and to define the content of applications, including the scope of permitted variants in a single application.
Regulations under the Industrial Design Act will be drafted over the next several months, and the full impact of the Bill C-43 amendments will become apparent when they are implemented in late 2015-2016.