Industrial Design Applications Under the Hague Agreement

What is the Hague Agreement?

The Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) is a collection of international treaties between 75 contracting parties (covering 92 countries)which establishes a unified system for industrial design registration (the Hague System). Canada became a party to the Hague Agreement on November 5, 2018 and modernized Canada’s design regime in the process by adopting the Hague System.

The Hague System provides the opportunity to secure industrial design protection in multiple jurisdictions through a single application filed with the International Bureau of the World Intellectual Property Organization (WIPO). The primary goal of the Hague System is to streamline the procedure for obtaining multiple industrial design registrations around the world by requiring the submission of a single application accompanied by just one payment in one currency.

The streamlined Hague System is available to any natural person or legal entity having a domicile or a real and effective industrial or commercial establishment in the jurisdiction of one of the Hague Agreement’s Contracting Parties.

Application Procedure Under the Hague System

Industrial design applications under the Hague System proceed through two main phases.

First, a prospective applicant consults with an intellectual property expert to compile their application package. Industrial design application packages generally consist of drawings showing the design, a description of the design and an identification of the applicant as well as contact information for the applicant and agent.

At this stage, the applicant also identifies in which jurisdictions among the Hague Agreement’s Contracting Parties the applicant is seeking protection and pays fees based on the scope of the protection sought (meaning the greater the number of jurisdictions in which protection of the industrial design is sought, the greater the cost associated with the application). Upon receipt, the International Bureau will conduct a preliminary examination of the application package for sufficiency of disclosure and administrative compliance. There are several formal requirements that must be met for an application to be deemed complete, otherwise, the applicant will be notified by the Bureau to remedy the irregularities within 3 months. The formal requirements include the name and contact information of the applicant; the applicant’s entitlement to file; the applicant’s Contracting Party; email address for correspondence if there are multiple applicants; appointment of a representative; appointment of a representative if the applicant chooses; information on the number of designs, reproductions and/or specimens; and the designated Contracting Parties chosen by the applicant. For more information on the formal requirements, please consult WIPO’s guide.

If the application is found compliant with the Hague System’s requirements, the design will be recorded and published in the International Designs Bulletin and the application package will be forwarded to the regional industrial design offices in the countries identified by the applicant. A substantive legal review occurs at these regional offices that determines whether the industrial design meets the local legal requirements for protection. No such substantive review is performed by the International Bureau. Substantive review by the regional offices must be concluded within as little as 6 months, in some cases, the regional office will have 12 months for review. Interestingly, if the regional offices do not refuse the application within the relevant period, it is deemed allowed and protection is deemed to be granted in that jurisdiction. The offices may also explicitly grant protection to the design before the period expires.

If the application is not approved on first examination, this will be communicated to the applicant and the applicant can then retain a local agent to remedy any defects or amend their application package as permitted by the regional administrative regime to address the reasons for refusal.

Note that the scope of protection a design receives in each jurisdiction is entirely dependent on the law in those jurisdictions, the effect of the Hague Agreement is only to provide for international procedure in obtaining that protection.

One advantage of the Hague System is that, once protection is granted, it may be renewed in multiple jurisdictions with one request and fee payment made to the International Bureau. This, as opposed to needing to obtain a renewal from each office individually.

Key Amendments to Canada’s Industrial Design Regime

The Canadian Industrial Design Act was amended in 2014 and new Industrial Design Regulations were finalized in the Canada Gazette, Part II, in 2018 for Canada to become a party to the Hague Agreement and implement the Hague System. Since becoming a party to the agreement, Canada has been popular among Hague applicants. In 2020, Canada was the 8th most designated member by Hague applicants. Further, 975 industrial design applications in Canada used the Hague System.

Under the amended Industrial Design Act and the new Industrial Design Regulations, the maximum term of protection for an industrial design is now the later of 10 years after the date of design registration or 15 years after the international filing date.

Certified copies of entries in the Register of Industrial Designs are now admissible as evidence in court and errors in application materials that are obvious from the documents in the possession of the Register of Industrial Designs may now be corrected within 6 months of the filing date.

The amendments also codified the common law test for novelty by requiring, as a prerequisite for design registration, that the registrable design, or a design not substantially different, has not been applied to a finished article and publicly disclosed more than 12 months before the priority date of the application.

Industrial design applications are also now made available to the public on the earlier of the date of registration of the design or 30 months after the filing or priority date of the application for registration. This applies only to applications not processed by the Hague system. Hague applications are published by the International Bureau six months following the date of registration, or, if the applicant so requests, the application may be immediately published or the publication deferred until no later than 30 months from the filing/priority date.

The Canadian Intellectual Property Office (CIPO) will no longer require the provision of transfer documents with a request to register a design transfer, instead only requiring the name and address of the transferee along with the prescribed fee for registration ($100 as of 2023). This, however, is only true where the transfer is requested by the transferor. If the transferee makes the request, evidence continues to be required.

Any electronic communications including documents, information, or payment of fees, between the applicant and WIPO in the course of an industrial design application will be deemed received on the day on which WIPO’s office receives them. This applies regardless of whether the office is, at the time of communication, open or closed to the public and effectively makes the electronic receipt of applicant material possible on a 24/7 basis.

An applicant is no longer required to provide signed authorization if they are appointing an agent and foreign applicants are no longer required to have a representative for service in Canada when applying through the Hague System.

Furthermore, the Regulations no longer require applicants to submit a title, description, and complete mailing address along with their application to secure a filing date. Instead, the Hague System only requires that the applicant unequivocally indicate that the registration of an industrial design is being sought, that there is sufficient material present to identify the applicant, that there is sufficient contact information for a processing office to contact the client, and that there is a representation of the design.

What the Hague System Means for Businesses

The aim of adopting the Hague System in Canada is to help businesses commercialize their intellectual property by aligning Canada’s industrial design framework with international standards and simplify the application procedure through reduced regulatory burden, lower costs, and less overall red tape.

The Hague System allows for a unified approach to managing and maintaining IP rights in multiple jurisdictions and supports the Government of Canada’s intellectual property strategy to develop a modern and robust regime that supports innovation.

The amendments to the Industrial Design Act and the new Regulations focus on making international industrial design applications more accessible to innovators and facilitating growth in the Canadian knowledge economy. These changes are partly a necessary component of the introduction of the Hague System into Canadian law but also bring our intellectual property regime closer to the status quo among our biggest trading partners. This reduces the complexity and cost of doing business for both Canadian innovators looking to bring their intellectual property to international markets and for non-Canadian entities wishing to enter or expand their presence in the Canadian market.

Some language found in the Industrial Design Act and the Regulations has been adjusted in order to align terminology with international standards as well, such as replacing the term “assignment” with “transfers” to reflect common vernacular among the international intellectual property community.

Some administrative reform is specifically aimed at removing ambiguity from key legal materials and promoting ease-of-access. Such reform includes clarifying what information is included in the Register of Industrial Designs – namely the date of registration, the filing date of the application, particulars of any request for priority, the registration number, and the name and address of the registered proprietor.

The scope of acceptable and unacceptable amendments is also clarified under the Regulations, with amendments that do not result in a design that differs substantially from the original draft being acceptable, whereas attempting to amend the name of a finished article to a substantially dissimilar name on or after the date on which the application is published is unequivocally unacceptable. Requests, on the other hand, to change the name or address of a registered proprietor will be received and the change registered free of charge.

The amendments did not change any of the Canadian Industrial Design Office fees.

Looking to Protect Your Design? We Can Help.

If you believe that your industrial design is original and has commercial potential, industrial design registration is a worthwhile investment. To learn more about how to get an industrial design registration in Canada or how to seek international industrial design protection under the Hague System, contact us now for a complimentary and confidential initial telephone appointment with a member of our team.