Legal and Technical Implications of Canadian Adherence to the Geneva Act of the Hague Agreement

On this page:

1. Introduction
   • Abbreviations
2. The Canadian Industrial Design Office as the Office of an Applicant's Contracting Party
   1. Office of the applicant's Contracting Party
   2. Filing an international application through the CIDO
3. Canada as the Competent Authority of the Holder's Contracting Party
   1. Requests for the recording of a change in ownership
4. The Canadian Industrial Design Office as the Office of a Designated Contracting Party
   1. IB communications to CIDO where Canada designated
   2. Examination of co-pending applications.
      • Confidentiality period
      • Gap between date of international registration and communication to CIDO
   3. Effect of international applications and registrations in Canada
      • Effect as application
      • Effect as grant of protection
   4. Canadian Industrial Design Register
   5. Time limits for refusals
   6. Grounds of refusal
   7. Contents of notifications of refusal
   8. Notification of withdrawal of refusal
   9. Notification of division of international registration
   10. Statement of grant of protection
   11. Invalidation in Canada of effects of international registration
   12. Fees
5. Form and Contents of Applications for Registration of an Industrial Design (Acceptability of Current Canadian Requirements)
   1. Prohibition of refusals based on non-compliance with formal requirements
   2. Prescribed form
      • Canadian law
      • Hague Agreement (1999)
   3. Reproductions of the design
   4. Description of the design
      • Canadian law and practice
      • Hague Agreement (1999)
   5. Declaration that the design was not in use
      • Canadian law
      • Hague Agreement (1999)
   6. Name and address of applicant and agent
      • Canadian law
      • Hague Agreement (1999)
   7. Title identifying the finished article
      • Canadian law and practice
      • Paris Convention, TRIPS and NAFTA
      • Hague Agreement (1999)
   8. Representative for service
      • Canadian law
      • Hague Agreement (1999)
   9. Unity of design and divisional applications
      • Canadian law
      • Hague Agreement (1999)
   10. Format of documents
       • Canadian law
       • Hague Agreement (1999)
   11. Language of application
       • Canadian law
       • Hague Agreement (1999)
6. Filing Date
   • Canadian law and practice
   • Hague Agreement (1999)
7. Priority
   • Canadian law and practice
   • Paris Convention
   • Hague Agreement (1999)
8. Deferment of Publication
   • Canadian law and practice
   • Hague Agreement (1999)
9. Term and Renewal
   • Canadian law and practice
   • Paris Convention
   • TRIPS
   • NAFTA
   • Hague Agreement (1999)
10. Recordal of Changes and Other Information
    • Canadian law and practice
    • Hague Agreement (1999)
11. Appointment of Agents
    • Canadian law and practice
    • Paris Convention, NAFTA IP Chapter, TRIPS Agreement
    • NAFTA Chapter on Cross-Border Trade in Services
    • Hague Agreement (1999)

Prepared for the Canadian Intellectual Property Office

by Alan Troicuk, Senior Counsel, Department of Justice Canada

June 2013

I. Introduction

This paper provides an overview of the legal and technical implications that Canadian adherence to the Geneva Act of the Hague Agreement would have for the functioning of the Canadian Industrial Design Office and for Canadian industrial design law. The views expressed in the paper are those of the author and do not necessarily reflect official positions of the Canadian Intellectual Property Office.

To give an appropriate context, this paper also includes analysis of relevant provisions in the Paris Convention for the Protection of Industrial Property; the North American Free Trade Agreement; the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Locarno Agreement Establishing an International Classification for Industrial Designs.

This paper assumes that the reader has a basic working knowledge of the Hague Agreement. For information on the Hague Agreement generally, the reader is referred to WIPO's Internet website at http://www.wipo.int/hague/en.

Abbreviations

Throughout this paper, the following abbreviations are used:

1) “Administrative Instructions” for the Administrative Instructions for the Application of the Hague Agreement;

2) “CIDA” for the Canadian Industrial Design Act;

3) “CIDO” for the Canadian Industrial Design Office;

4) “CIDR” for the Canadian Industrial Design Regulations;

5) “IB” for the International Bureau of the World Intellectual Property Organization;

6) “Hague Agreement (1999)” for the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs;

7) “Hague Regulations” for the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement;

8) “international application” for an application for international registration of an industrial design under the Hague Agreement (1999);

9) “Locarno Classification” for the International Classification established under the Locarno Agreement Establishing an International Classification for Industrial Designs;

10) “NAFTA” for the North American Free Trade Agreement;

11) “TRIPS” for the Agreement on Trade-Related Aspects of Intellectual Property Rights;

12) “WIPO” for the World Intellectual Property Organization; and

13) “WIPO Guide (January 2012)” for the January 2012 version of the Guide to the International Registration of Industrial Designs under the Hague Agreement, available on the WIPO web site

II. The Canadian Industrial Design Office as the Office of an applicant's Contracting Party

1. Office of the applicant's Contracting Party

The term “applicant's Contracting Party” is defined in Article 1(xiv) of the Hague Agreement (1999) to mean the Contracting Party or one of the Contracting Parties from which the applicant derives its entitlement to file an international application by virtue of the applicant being a national of that Contracting Party or by having a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of that Contracting Party. If an applicant derives the necessary entitlement from more than one Contracting Party, the “applicant's Contracting Party” means the one which is indicated as such in the international application.

If Canada were to adhere to the Hague Agreement (1999), the CIDO would be the Office of an applicant's Contracting Party when

2. Filing an international application through the CIDO

Pursuant to Article 4(1) of the Hague Agreement (1999), an “international application may be filed, at the option of the applicant, either directly with the International Bureau or through the Office of the applicant's Contracting Party”.

Contracting Parties are not permitted to require any applicant to file through it. However, under Article 4(1)(b) of the Hague Agreement (1999), they may prohibit this indirect route by notifying the Director General of WIPO in a declaration that international applications may not be filed through its office. As of August 2012, the following Contracting Parties had filed such a declaration: African Intellectual Property Organization (OAPI), Croatia, European Union, France, Latvia, Monaco, Slovenia, The Former Yugoslav Republic of Macedonia and Ukraine.

In practice, between 97% and 99% of all international applications are filed directly with the IB.

International applications filed directly with the IB may be presented to the IB either on paper or electronically, via the electronic filing interface (E-filing) on the WIPO website¹. Only applications in paper form would be filed indirectly through the Office of an applicant's Contracting Party.

If Canada were to decide to permit international applications to be filed through the CIDO:

Canada may wish to consider making a declaration under Article 4(1)(b) of the Hague Agreement (1999) notifying the Director General of WIPO that international applications may not be filed through the CIDO.

III. Canada as the Competent Authority of the Holder's Contracting Party

Requests for the recording of a change in ownership

In accordance with Rule 21(1)(b) of the Hague Regulations, a request for the recording of a change in ownership may be either

1) presented by the holder and signed by the holder; or

2) “presented by the new owner, provided that it is (i) signed by the holder, or (ii) signed by the new owner and accompanied by an attestation from the competent authority of the holder's Contracting Party that the new owner appears to be the successor in title of the holder”.

Canada would need to decide whether it would be prepared to have competent authorities in Canada take on the responsibility of providing attestations concerning changes in ownership.

IV. The Canadian Industrial Design Office as the Office of a Designated Contracting Party

1. IB communications to CIDO where Canada designated

Under Article 10(5)(a), where Canada was designated in an international application, the CIDO would, immediately after registration has been effected, receive (provided that it notifies the IB that it wishes to so receive) “a copy of the international registration, along with any relevant statement, document or specimen accompanying the international application”. Assuming that the CIDO continued to carry out an examination for novelty, this documentation would be important for the identification of potentially conflicting co-pending applications and Canada would thus very likely wish to notify the IB that it wished to receive this documentation.

Under Article 5(1)(iii) and Rule 16(3), where there is a request for deferred publication and the industrial design is two dimensional, the applicant has the option at filing to submit specimens instead of a reproduction and to delay submission of a reproduction up to three months before the expiry of the period of deferment. This means that in certain cases, the communication under Article 10(5)(a) could include a physical specimen instead of a reproduction.

The time limit for the CIDO to notify the IB of any refusal of protection is calculated from the date of the publication of the international registration.² Under Rules 17 and 26(3), such publication takes place in the International Designs Bulletin which is published only electronically on the WIPO website. Although under Section 204(d) of the Administrative Instructions the IB will upon request electronically communicate to the Office of each Contracting Party the date on which each issue of the International Designs Bulletin is published on the WIPO website, the IB does not provide the Office of a designated Contracting Party with any specific notification when a particular international registration for which it is designated is published. Accordingly, the CIDO will need to itself monitor on an ongoing basis the publication of international registrations for which it is designated.

2. Examination of co-pending applications

Confidentiality period

Depending upon whether publication is deferred or, if so, the length of the deferment, there will be a gap of up to about 30 months between the receipt by the Office of a designated Contracting Party of documentation concerning the international registration under Article 10(5)(a) and the publication of the international registration. During this period, Article 10(5)(b) requires that that documentation be used only for the purpose of examination of other applications and prohibits any divulgation of the contents of the international registration to any person outside the Office other than the holder of the international registration with the one limited exception of confidential disclosures made for the purposes of an administrative or legal proceeding involving a conflict over entitlement to file the international application on which the international registration is based.

With respect to the examination of other applications in the period before publication, paragraphs B.II.07.30 and B.II.07.31 of the WIPO Guide (January 2012) provide the following guidance:

To ensure compliance with Article 10(5)(b), it may be desirable to amend the CIDA to specifically provide that documentation concerning international registrations sent to it under Article 10(5)(a) must be kept confidential until publication of the international registration and only be divulged in accordance with Article 10(5)(b).

Gap between date of international registration and communication to CIDO

There would normally be some time delay (and in exceptional cases a significant time delay) between the date of the international registration and the sending by the IB to the CIDO of a copy of the international registration under Article 10(5)(a). The reasons for this include the following:

1) Under Articles 10(2)(a) and 9(2) and Rule 13(3)(i), where the international application is filed through the Office of the applicant's Contracting Party, the date of the international registration will, if there are no irregularities, be the date the application was received by that Office provided that it is received by the IB within one month of that date.

2) For irregularities that don't entail a postponement of the filing date, Rule 14(1) requires that applicants be given a period of three months from the date of an invitation to correct the irregularity, with the effect that the actual registration would be delayed for up to about three months but the date of the international registration, once effected, would still be deemed under Article 10(2) to be the filing date.

3) There may in some cases be delays due to the time for administrative processing by the IB.

4) Under Rule 5, delays of up to six months may be excused where there is an interruption of postal or delivery service on account of war, revolution, civil disorder, strike, natural calamity or other like reason.

In accordance with s.6(1) CIDA, the CIDO (on behalf of the Minister) is prohibited from registering a design if the design is identical with, or so closely resembles as to be confounded with, a design which has already been registered. In order to apply s.6(1) fairly, the practice of the CIDO is to delay the registration of any design until it is satisfied that there is no conflicting previously made registration and no conflicting co-pending application having an earlier filing or priority date. The potentially significant time delay between the date of the international registration and the sending of a copy to the CIDO under Article 10(5)(a) would make it difficult for the CIDO to apply s.6(1) CIDA in a fair and timely manner. Further, it is not clear that if the CIDO were to incorrectly register a design where, because of the delay, it was not aware of a co-pending application entitled to an earlier date, there would be any remedy available before the CIDO or the courts. If Canada were to adhere to the Hague Agreement (1999), consideration would need to be given to amending s.6(1) CIDA. One amendment that might be made is to amend the CIDA to make the entitlement to registration in the case of conflicting applications dependent upon the relative filing or priority dates (as is the case for example under ss.28.2(1)(c) and (d) of the Patent Act).

3. Effect of international applications and registrations in Canada

Effect as application

Article 14(1) provides:

The CIDA and CIDR would need to be amended to specifically give an international registration designating Canada the same effect as an application for registration under s.4 CIDA. Further, Canada would have to treat any international registration designating Canada as having met, on the date of the international registration, the Canadian requirements for a filing date.³

Effect as grant of protection

Article 14(2) provides:

Rule 18(1)(c) provides:

Under ss.9 and 10 CIDA, an exclusive right for an industrial design is acquired by registration of the design and the term of protection for that exclusive right is, subject to renewal, ten years from the date of registration.

Taking into account ss.9 and 10 CIDA, there would appear to be a number of different options for Canada to satisfy the requirements of Article 14(2).

One option would be to amend the CIDA to deem an industrial design that is the subject of an international application designating Canada to be registered in Canada on the earlier of 1) the date that the CIDO sends to the IB a statement of grant of protection under Rule 18bis, or 2) if, within the time period for the CIDO to communicate a refusal, no refusal is communicated, the date of expiration of that period.

Another option (but which to date has not been adopted by any Contracting Party) may be for Canada to make a declaration under Rule 18(1)(c) that in Canada an international registration shall produce the effect referred to in Article 14(2)(a) at the time when the design is registered in Canada. In order to do so, Canada would need to ensure

Under Article 14(3), “[a]ny Contracting Party whose office is an Examining Office may, in a declaration, notify the Director General that, where it is the applicant's Contracting Party, the designation of that Contracting Party in an international registration shall have no effect”. The effect of such a declaration would essentially be to prohibit Canadians using the Hague system from designating Canada. Whether the CIDO would fall within the definition of an Examining Office under the Hague Agreement (and thus whether Canada would be entitled to make this declaration), would in view of the definition of that term in Article 1(xvii) depend upon the extent of the novelty examination carried out by the CIDO.

4. Canadian Industrial Design Register

In accordance with Article 10(3), international registrations are published by the IB on the WIPO website in the International Designs Bulletin and such publication is deemed in all Contracting Parties to be sufficient publicity, and no other publicity may be required of the holder.

Paragraph B.II.07.02 of the WIPO Guide (January 2012) states that “a Contracting Party is not precluded from republishing, in whole or in part, if it so wishes …However, in such a case, the republication may not create for the holder an obligation to furnish further reproductions of the design or an obligation to pay an additional fee to the Office of that Contracting Party.”

It may be possible for Canada to implement the Hague Agreement (1999) without entering international registrations designating Canada in the Canadian Industrial Design Register and without in any way making international registrations available to the public through a Canadian database or website. However, some reasons why it might wish to do so include:

1) Under Article 14(2), the effect given to an international registration applies to the industrial design or designs that are either 1) the subject of that registration as received from the International Bureau by the designated office or 2) where applicable, as amended in the procedure before that office. Particularly if the CIDO were to continue to conduct a substantive examination of industrial design applications, it may be expected that there would often be amendments during the national procedure before the CIDO. Such amendments would not appear in the publication of the international registration and would need to be made available to the public by the CIDO in some way (most likely on the CIDO website).

2) As discussed above⁴, Canada may choose to make a declaration under Rule 18(1)(c) that in Canada an international registration shall produce the effect referred to in Article 14(2)(a) when the design is registered in Canada.

5. Time limits for refusals

In accordance with Article 12(2) and Rule 18(1)(a), the basic rule is that the Office of a designated Contracting Party must notify the IB of any refusal of protection within six months from the publication of the international registration.

In respect of the Hague Agreement (1999), however, Rule 18(1)(b) provides that “any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition to the grant of protection, may, in a declaration, notify the Director General that … the period of six months referred to in that subparagraph shall be replaced by a period of 12 months.” The term 'Examining Office” is defined in Article 1(xvii) to mean “an Office which ex officio examines applications filed with it for the protection of industrial designs at least to determine whether the industrial designs satisfy the condition of novelty”. Depending upon the extent of the novelty examination carried out by the CIDO (or whether Canada decides to put in place an opposition procedure), Canada may be entitled to make the declaration referred to in Rule 18(1)(b).

Under Article 12(2) and Rule 18, in order to determine whether a notification of refusal of protection meets the applicable deadline (whether six months or twelve months from the publication of the international registration), it is the date of sending of the notification of the refusal, by the Office concerned, which is decisive and not the date of receipt by the IB⁵.

Details of how the date of sending of a notification of refusal is determined are set out in Section 501 of the Administrative Instructions, which provides:

“In the case of a notification of refusal sent through a postal service, the date of dispatch shall be determined by the postmark. If the postmark is illegible or missing, the International Bureau shall treat such notification as if it had been sent 20 days before the date of its receipt by the International Bureau. However, if the date of dispatch thus determined is earlier than any date of refusal or date of sending mentioned in the notification, the International Bureau shall treat such notification as if it had been sent on the latter date. In the case of a notification of refusal sent through a delivery service, the date of dispatch shall be determined by the indication given by such delivery service on the basis of the details of the mailing as recorded by it.”

Under Rule 4(4), if the period within which a notification of refusal must be sent by the Office of a designated Contracting Party expires on a day on which that office is not open to the public, that period is extended so that it expires on the first subsequent day on which the office is open to the public.

Although the CIDO would normally probably wish to raise all grounds of refusal in a single notification, it would be permissible under the Hague Agreement (1999) to raise additional grounds of refusal in separate notifications provided that all such notifications were issued within the applicable six or twelve month time limit for refusal.

If a holder in response to a notification of refusal made an amendment that raised new grounds of refusal, such grounds could be raised even after the time limit for refusal.

Paragraph B.II.09.14 of the WIPO Guide (January 2012) states:

“The requirement to state in the notification of refusal all grounds on which the refusal is based does not prevent new grounds from being raised subsequently during the procedure before the Office, even after expiry of the time limit for refusal, as a result of the holder's reaction to the refusal, or during an appeal procedure lodged by the holder, since the latter is informed of those grounds under the procedure in question.”

6. Grounds of refusal

Article 12(1) provides:

“The Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration in the territory of the said Contracting Party, provided that no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international application that are provided for in this Act or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.”

In accordance with Article 12(1), the CIDO would be able to refuse the effects of an international registration in Canada on the basis of any ground that would currently be available under the CIDA and CIDR with the exception of any ground relating to the form or contents of the application. This limitation is explained in paragraph B.II.09.03 of the WIPO Guide (January 2012) as follows:

“Protection may not be refused on the grounds that the international registration does not satisfy formal requirements, since such requirements are to be considered by each Contracting Party as having already been satisfied following the examination carried out by the International Bureau. For example, a designated Office may not refuse protection on the ground that the required fees have not been paid or that the quality of the reproductions is not sufficient, since such verification is the exclusive responsibility of the International Bureau.”

Although the CIDO would not be entitled to raise any objection based on non-compliance with formal requirements, in a situation where an applicant's non-compliance with a formal requirement resulted in there also being non-compliance with a substantive condition of registrability under Canadian law, nothing in the Hague Agreement (1999) would prevent the CIDO from refusing the effects of the application on the basis of that substantive non-compliance. In the specific context of disclosure requirements, this principle is explicitly set out in Rule 9(4) which states:

“A Contracting Party may not refuse the effects of the international registration on the ground that requirements relating to the form of the reproductions of the industrial design that are additional to, or different from, those notified by that Contracting Party in accordance with paragraph (3)(a) have not been satisfied under its law. A Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design.”

The CIDO takes the position that, under the CIDA and the CIDR, for a Canadian industrial design application to be acceptable, it must be clear from the combination of the drawings, the description and the title, what are the features of the design and what is the finished article to which the design is applied. Although it would not be open under the Hague Agreement (1999) for the CIDO to refuse the effects of an international application because it does not comply with the formal requirements under the CIDA and the CIDR relating to drawings, the description and the title, it would nevertheless appear open to the CIDO to refuse the effects of an international application in any situation where it is not clear from the contents of the international application (notably from the combination of the reproductions, the description and the identification of the product) what are the features of the design and what is the finished article to which the design is applied. In respect of any international application where this is not clear, Canada could take the position that the information contained in the international application is not sufficient to disclose fully the industrial design and that the application does not comply with a substantive condition of registrability under Canadian law.

One exception to the application of Article 12(1) is provided by Article 13(1)⁶ which
would permit CIPO to make a declaration exempting itself from the unity of design requirements that would otherwise apply under the Hague Agreement (1999).

7. Contents of notifications of refusal

Rule 18(2) provides:

“(a) The notification of any refusal shall relate to one international registration, shall be dated and shall be signed by the Office making the notification.

(b) The notification shall contain or indicate
(i) the Office making the notification,
(ii) the number of the international registration,
(iii) all the grounds on which the refusal is based together with a reference to the corresponding essential provisions of the law,
(iv) where the grounds on which the refusal is based refer to similarity with an industrial design which has been the subject of an earlier national, regional or international application or registration, the filing date and number, the priority date (if any), the registration date and number (if available), a copy of a reproduction of the earlier industrial design (if that reproduction is accessible to the public) and the name and address of the owner of the said industrial design, as provided for in the Administrative Instructions,
(v) where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate,
(vi) whether the refusal may be subject to review or appeal and, if so, the time limit, reasonable under the circumstances, for any request for review of, or appeal against, the refusal and the authority to which such request for review or appeal shall lie, with the indication, where applicable, that the request for review or the appeal has to be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal, and
(vii) the date on which the refusal was pronounced.”

8. Notification of withdrawal of refusal

When a notification of refusal is communicated by a designated Office to the IB, Article 12(3) requires the IB to transmit without delay a copy of the notification of refusal to the holder.

In the case of a notification of refusal by CIDO sent to a holder of an international registration, Canada would need to provide the holder with the same remedies as would be available to an industrial design applicant in Canada to reply to a Minister's report (i.e. an office action) under s.5(2) CIDA.

Article 12(3)(b) provides:

“The holder shall enjoy the same remedies as if any industrial design that is the subject of the international registration had been the subject of an application for the grant of protection under the law applicable to the Office that communicated the refusal. Such remedies shall at least consist of the possibility of a re-examination or a review of the refusal or an appeal against the refusal.”

If after a notification of refusal by the CIDO was transmitted to the holder, the holder was by argument able to convince the CIDO that the ground of refusal was not justified or if the holder was to make an amendment to overcome the ground of refusal, the CIDO would in accordance with Article 12(4) and Rule 18(4) make a notification of withdrawal of refusal.

Rule 18(4) provides:

9. Notification of division of international registration⁷

Rule 18(3) provides:

“Where, following a notification of refusal in accordance with Article 13(2) of the 1999 Act, an international registration is divided before the Office of a designated Contracting Party in order to overcome a ground of refusal stated in that notification, that Office shall notify the International Bureau of such data concerning the division as shall be specified in the Administrative Instructions.”

10. Statement of grant of protection

In accordance with Rule 18bis(2), an “Office which has communicated a notification of refusal and which has decided to either partially or totally withdraw such refusal, may, instead of notifying a withdrawal of refusal… send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned”.

In accordance with Rule 18bis(1), an “Office which has not communicated a notification of refusal may, within the period applicable under Rule 18(1)(a) or (b) [i.e. the applicable six or twelve month period to notify a refusal], send to the International Bureau a statement to the effect that protection is granted to the industrial designs that are the subject of the international registration in the Contracting Party concerned”.

11. Invalidation in Canada of effects of international registration

The Hague Agreement (1999) would not place any restriction on the ability of Canadian courts to invalidate for any reason the effects of an international registration in Canada. The only restriction on invalidation would be, according to Article 15(1), that it “may not be pronounced without the holder having, in good time, been afforded the opportunity of defending his rights.”

Article 15(2) and Rule 20 would require the CIDO to notify the IB of any decision, of which it is aware, by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada invalidating, in whole or in part, the effects in Canada of an international registration. This would appear to cover the equivalent of a decision to expunge an industrial design registration in accordance with s.22 CIDA. Article 15(2) and Rule 20 would not appear to cover an inter partes declaration of invalidity by a provincial superior court.

Article 15(2) and Rule 20 would only apply to decisions of which the CIDO was aware. S.24 CIDA requires an officer of the Registry of the Court to transmit to the Minister of Industry a certified copy of any order for the making, expunging or varying of any entry in the Register of Industrial Designs. If Canada were to join the Hague system, it may be desirable to amend s.24 CIDA to specifically cover decisions invalidating the effects of an international registration.

In accordance with Article 16(1)(vi) and Rule 20(2), the IB records invalidations in the International Register. It also publishes invalidations on the WIPO web site in the International Designs Bulletin.

12. Fees

If Canada were to join the Hague Agreement (1999), it would, in accordance with Article 7 and Rule 12, be entitled to receive a designation fee for each international application in respect of which it was designated. This fee could be either a standard designation fee (which has three levels dependent upon the level of substantive examination carried out by the office) or, if the CIDO were to fall within the definition of an Examining Office as defined in Article 1(xvii), an individual designation fee fixed by Canada. Whether the CIDO would fall within the definition of an Examining Office would depend upon the extent of the novelty examination carried out by the CIDO.

In order for the CIDO to receive more than the first level of the standard designation fee, Canada would need to meet the requirements for that higher level and make a declaration under Rule 12(1)(c) or Article 7(2).

V. Form and Contents of Applications for Registration of an Industrial Design (Acceptability of Current Canadian Requirements)

1. Prohibition of refusals based on non-compliance with formal requirements

As discussed above under the heading “Grounds of refusal”, Article 12(1) would prohibit the CIDO from refusing the effects of an international registration on the grounds that the international registration does not satisfy formal requirements.

2. Prescribed form

Canadian law

S.4(1) CIDA requires an applicant for registration of an industrial design to file “an application with the Minister in the prescribed form”.

S.9(1) CIDR provides that an application “must be made in the form set out in Schedule 1”.

Hague Agreement (1999)

The requirement to use a prescribed form could not be maintained by Canada for international applications designating Canada.

3. Reproductions of the design

Canadian requirements concerning reproductions of designs are set out in s.4(1)(a) CIDA and s.9.1 CIDR. S.12 CIDR sets out a number of technical requirements applicable in respect of all documents filed with the Minister including reproductions.

For international applications, requirements concerning the form of reproductions are set out in Article 5(1)(iii), Rule 9 and Part 4 of the Administrative Instructions. Although in limited circumstances under Article 5(1)(iii) specimens are permitted to be filed instead of a reproduction at the time of filing, Rule 16(3) requires that a reproduction be filed before publication.

As a general principle, in accordance with Article 12(1), the CIDO would not be entitled to refuse the effects of an international registration on the basis of a requirement relating to the form or content of reproductions. Under Rule 9(3), Canada could make a declaration that it requires, in specified circumstances, “certain specified views of the product or products which constitute the industrial design or in relation to which the industrial design is to be used”, in which case it could then base a refusal on non-compliance with those specific requirements. Despite the limitations on making refusals concerning the form or contents of reproductions, Rule 9(4), however, makes clear that a Contracting Party may “refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design”.

S.4(1)(a) CIDA requires an application to include “a drawing or photograph of the design”.

Under the Hague Agreement (1999), an applicant for international registration is required to submit one or more reproductions of the industrial design and Rule 9(1) provides that “[r]eproductions of the industrial design shall, at the option of the applicant, be in the form of photographs or other graphic representations of the industrial design itself or of the product or products which constitute the industrial design”. Under the Hague Agreement (1999), an applicant may file a mixture of drawings and photographs in one application.

S.9.1(1) CIDR provides: “Drawings must have margins of at least 2.5 cm.”

The closest requirement under the Hague Agreement (1999) is found in Section 401(d) of the Administrative Instructions, the second sentence of which provides: “Where that application is filed on paper, a margin of at least 5 millimeters should be left around the representation of each industrial design.”

S.9.1(2)(a) CIDR provides: “All views on a drawing or photograph must … be of sufficient quality to permit the features of the design to be identified clearly and accurately”.

Similar requirements are found in Rule 9(2)(a) of the Hague Regulations which provides: “Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication.”

S.9.1(2)(b) CIDR provides: “All views on a drawing or photograph must …clearly and accurately show the article to which the design is applied”.

There is no requirement under the Hague Agreement (1999) for reproductions to show the article to which the design is applied, although in many cases as a practical matter the applicant will necessarily need to show the article in order to show the details of the design. Rule 9(1) provides that “[r]eproductions of the industrial design shall, at the option of the applicant, be … of the industrial design itself or of the product or products which constitute the industrial design”.

S.9.1(2)(c) CIDR provides: “All views on a drawing or photograph must … show the article in isolation.”

S.9.1(3) CIDR provides: “However, in the case of an application containing more than one view, a single view on a single drawing may show environment that is not part of the article to which the design is applied if that environment helps to make clear what the article is or what the features of the design are.”

Under the Hague Agreement (1999), reproductions are not permitted to show environment. Section 402 of the Administrative Instructions provides: “The photographs and other graphic representations shall represent the industrial design alone, or the product in relation to which the industrial design is to be used, to the exclusion of any other object, accessory, person or animal.”

Subsections 9.1(4) and (5) CIDR provide:

These requirements are similar to those under the Hague Agreement (1999) with the exception that the Hague system does not permit environment to be shown. Section 403 of the Administrative Instructions provides: “Matter which is shown in a reproduction but for which protection is not sought may be indicated (i) in the description referred to in Rule 7(5)(a) and/or (ii) by means of dotted or broken lines.”

S.12(1) CIDR provides: “All documents filed with the Minister must be clear and legible and be presented so as to permit direct reproduction in black and white.”

The requirements for clarity, legibility and reproducibility are similar to the requirements of Rule 9(2)(a) of the Hague Regulations which provides: “Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication.”

The requirement for reproducibility in black and white is not found in the Hague system. Section 401 of the Administrative Instructions provides: “One and the same international application may comprise both photographs and other graphic representations, in black and white or in color.”

S.2 CIDA defines the terms “design” and “industrial design” to mean “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged by the eye”. This definition would appear to include color as a possible element of features of pattern or ornament. The CIDO has taken the position that, in view of the reference to “black and white” in s.12(1) CIDR, designs can only be registered in black and white.

If Canada were to adhere to the Hague Agreement (1999), it would need to consider how to treat international registrations where the registration includes color reproductions. Nothing would prevent Canada from amending the Industrial Design Act to specifically provide, as a matter of substantive law, that color elements cannot be protected as elements of a registered industrial design. However, having regard to Article 12(1), the CIDO could not refuse the effects of an international registration solely for the formal reason that the reproductions are in color instead of black and white.

4. Description of the design

Canadian law and practice

 S.4(1)(a) CIDA requires an application to include, in the prescribed form, “a description of the design”.

S.9(2)(c) CIDR requires an application to include “for the purpose of paragraph 4(1)(a) of the Act, a description that identifies the features that constitute the design”.

The CIDO publication Industrial Design Office Practices⁸ states:

Hague Agreement (1999)

Article 5(2) provides (in part):

The term “Examining Office” is defined in Article 1(xvii) to mean “an Office which ex officio examines applications filed with it for the protection of industrial designs at least to determine whether the industrial designs satisfy the condition of novelty.”

Rule 7(4)(b) provides:

“Where a Contracting Party designated under the 1999 Act has notified the Director General, in accordance with Article 5(2)(a) of the 1999 Act, that its law requires one or more of the elements referred to in Article 5(2)(b) of the 1999 Act, the international application shall contain such element or elements, as prescribed in Rule 11.”

Rule 7(5)(b) allows an applicant to include a description in an international application even if no contracting party has made a declaration to require it under Article 5(2)(a).

Rule 11(2) provides:

“Where the international application contains a description, the latter shall concern those features that appear in the reproductions of the industrial design and may not concern technical features of the operation of the industrial design or its possible utilization. If the description exceeds 100 words, an additional fee, as set out in the Schedule of Fees, shall be payable.”

Section 403 of the Administrative Instructions clarifies that a description may also serve as a way of disclaiming protection in respect of some characteristics of an industrial design.

Depending upon the extent of the novelty examination carried out by the CIDO, Canada may be entitled to make the declaration referred to in Article 5(2)(a), thus requiring any applicant who designates Canada in an international application to include a description in the international application. It would appear that any description that complies with the requirements for a description under the Hague Agreement (1999) (in particular Rule 11) would also comply with the requirements of s.4(1)(a) CIDA and s.9(2)(c) CIDR.

5. Declaration that the design was not in use

Canadian law

S.4(1)(b) CIDA requires an application to include “a declaration that the design was not, to the proprietor's knowledge, in use by any person other than the first proprietor at the time the design was adopted by the first proprietor”.

Hague Agreement (1999)

The Hague Agreement(1999) does not permit a declaration of this type to be included in an international application and, in accordance with Article 12(1), the CIDO would be prohibited from refusing the effects of an international application on the ground that the application does not contain such a declaration.

6. Name and address of applicant and agent

Canadian law

S.9(2)(a) CIDR requires an application to include “the name and address of the applicant and, if an agent is named, the name and address of the agent”.

S.5 CIDR provides: “Any address that is required to be furnished under the Act or these Regulations must be a complete mailing address and include the street name and number and the postal code when they exist.”

Hague Agreement (1999)

Rules 7(3)(i) and (ii) require an international application to contain or indicate the name and address of the applicant, given in accordance with the Administrative Instructions. The relevant Administrative Instructions provide:

It seems likely that if the name and address of an applicant satisfies the requirements of Section 301 of the Administrative Instructions, that name and address will also comply with the requirements of s.5 and 9(2)(a) CIDR.

The requirement in s.9(2)(a) CIDR that, if an agent is named, the name and address of that agent must be included in the application would not be compatible with the Hague system. The official form for an international application does include a box for the appointment of a representative; however, the appointment of a representative in the international application empowers the representative to act only before the IB. Although requirements for the appointment of an agent before the CIDO are outside the scope of the Hague Agreement (1999)⁹, Article 12(1) would prevent the CIDO from refusing the effects of an international registration for the reason that the name and address of a Canadian local agent did not appear in the international application.

7. Title identifying the finished article

Canadian law and practice

S.9(2)(b) CIDR requires an application to include “ a title identifying the finished article or set in respect of which the registration of the design is requested”.

The term “set” is defined in s.2 CIDA:

““set” means a number of articles of the same general character ordinarily on sale together or intended to be used together, to each of which the same design or variants thereof are applied;”

The way in which the finished article or set is identified in the title is of relevance both for the assessment of the originality of the design in question (either during examination of an application or in proceedings for expungement) and for determining the scope of protection to which a registered design is entitled.

To be entitled to registration under the CIDA, a design must be original. To constitute an original design there must be some substantial difference between it and what had existed as applied to articles of an analogous character.¹⁰

Under s.11 CIDA, there can be no infringement of an industrial design registration unless the design, or a design not differing substantially therefrom, has been applied to an article for which the design is registered (which in practice means the article or set identified in the title).

The CIDO publication Industrial Design Office Practices¹¹ states:

Paris Convention, TRIPS and NAFTA

None of the Paris Convention, TRIPS or NAFTA contain a definition of what constitutes an industrial design, thus leaving contracting parties free to maintain their currently divergent concepts of what constitutes an industrial design that is eligible for protection.

Hague Agreement (1999)

Article 5(1)(iv) requires an international application to contain or be accompanied by “an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, as prescribed”.

Rule 7(3)(iv) requires an international application to contain or indicate “the product or products which constitute the industrial design or in relation to which the industrial design is to be used, with an indication of whether the product or products constitute the industrial design or are products in relation to which the industrial design is to be used; the product or products shall preferably be identified by using terms appearing in the list of goods of the International Classification”.

Item 8 of the official form¹² for applying for an international application provides the following table for the inclusion of information about the relevant product or products:

Products which constitute the industrial design or in relation to which it is to be used
(see note 1)

Class to which the industrial design(s) belong(s):
No. of the design (in numerical order)	Product(s)	Subclass (optional)
If the space provided is not sufficient, check this box and use a continuation sheet.

Note 1 on the cover page states:

“The international application may contain several industrial designs (but may not exceed 100). However, all the industrial designs and/or products in relation to which such designs are to be used must belong to the same class of the International (Locarno) Classification. The list of classes and subclasses of the Locarno Classification together with Explanatory Notes is available on the following website: http://www.wipo.int/classifications/nivilo/locarno.html.”

Chapter B.II of the WIPO Guide (January 2012) provides the following information about Item 8 of the international application official form:

As discussed above, under Canadian law, the way in which the title included in an industrial design application identifies the finished article or set in respect of which registration of the design is requested is of importance for the assessment of originality and for determining the scope of protection to which a registered design is entitled. The Hague Agreement (1999) does require an international application to include an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used; however, the manner in which this product information is typically provided in international applications would not appear to necessarily match the information required for the purposes of the Canadian requirement to provide a title. The potential for such a mismatch would appear to be particularly likely for the small percentage of international registrations falling within Class 32 of the Locarno Classification (which covers graphic symbols and logos, surface patterns and ornamentation).

In accordance with Article 12(1), the CIDO would not be able to refuse the effects of an international application on the ground that requirements relating to form or contents have not been satisfied and thus could not refuse the effects of an international application for the sole reason that the application does not contain a title identifying the finished article or set as required by s.9(2)(b) CIDR. On the other hand, nothing in the Hague Agreement (1999) would prevent the CIDO from refusing the effects of an international application on the ground of non-compliance with a substantive condition of registrability under Canadian law and thus, if the finished article or set is not satisfactorily identified in the international application, it would appear, in at least some cases, to be open to the CIDO to refuse the effects of the application on the basis that the information contained in the international application is not sufficient to fully disclose the industrial design.

The manner in which applicants in international applications are likely to identify the product in the table in Item 8 of the international application appears likely to be based upon considerations (such as how an industrial design is defined in other countries or by reference to terms from the Locarno Classification) that could be considerably different than the considerations based on Canadian law that would lead a Canadian domestic applicant to select a particular title in a Canadian industrial design application. This may have the potential to lead to unexpected and undesirable results for applicants (especially foreign applicants but perhaps also for Canadian applicants) using the Hague Agreement (1999) to obtain protection in Canada. It would need to be studied how serious problems of this nature are likely to be, whether such problems are likely to be frequent, whether they might be remedied by appropriate education of applicants and whether it might be desirable to make some adjustments to Canadian legislation in order to better accommodate the information likely to be provided in the table in Item 8 of the international application.

8. Representative for service

Canadian law

S.1 CIDR defines “representative for service” to mean “a person or firm in Canada who is appointed by an applicant or registered proprietor to receive any notice or on whom documents are to be served on behalf of the applicant or registered proprietor for the purposes of these Regulations”.

S.9(2)(e) CIDR requires an application to include “if the applicant has no place of business in Canada, the name and address of a representative for service”.

S.5 CIDR provides: “Any address that is required to be furnished under the Act or these Regulations must be a complete mailing address and include the street name and number and the postal code when they exist.”

S.15 CIDR provides: “A notice of a proceeding relating to an application or registered design that is sent to, or served on, a representative for service has the same effect as if it were sent to, or served on, the applicant or the registered proprietor.”

Hague Agreement (1999)

No provision is made under the Hague Agreement (1999) for the inclusion in the international application of the name and address of a representative for service in the territory of each designated contracting party. In accordance with Article 12(1), the CIDO would not be entitled to refuse the effects of an international application for the sole reason that it did not include the name and address of a representative for service.

Rule 18(2)(vi) allows a Contracting Party to require in a notification of refusal that any request for review or appeal has to be filed through the intermediary of a representative [which in Canadian terminology corresponds to an agent and not a representative for service] whose address is within the territory of that Contracting Party. It would appear consistent with Rule 18(2)(vi) for Canada to require an applicant, in order to reply to a notification of refusal, to provide at least one of the following: 1) the address of the applicant's place of business in Canada, if any; 2) the name and address in Canada of a Canadian agent appointed by the applicant; or 3) the name and address of a representative for service in Canada (or alternatively, at Canada's option, a simple address for service or correspondence in Canada).

9. Unity of design and divisional applications

Canadian law

S.10 CIDR provides:

The terms 'set” and “variants” are defined in s.2 CIDA:

Hague Agreement (1999)

In accordance with Article 5(4) and Rules 7(3)(v) and (7), a single international application is permitted to include up to 100 different designs; however all the designs included in a single international application must belong to the same class of the Locarno Classification.

Article 12(1) prohibits the Office of a designated Contracting Party from refusing the effects of an international registration on the ground that requirements relating to form or contents have not been satisfied and this, subject to CIPO making a declaration under Article 13, would prevent Canada from applying the unity of design requirements of s.10 CIDR, thus requiring Canada (as a designated Contracting Party) to accept applications containing up to 100 designs provided that they all belong to the same class.

Article 13(1) would permit CIPO to make a declaration exempting itself from the unity of design requirements that would otherwise apply under the Hague Agreement (1999). It provides:

Where, following a notification of refusal in accordance with Article 13(2), an international application is divided before the Office of a designated Contracting Party in order to overcome a ground of refusal stated in that notification, Rule 18(3) and Section 502 of the Administrative Instructions require that Office to notify the IB of that fact and of certain additional particulars.

Although an international application may be divided before the Office of a designated Contracting Party in order to overcome a ground of refusal based upon lack of unity of design, the international registration in the International Register would not be divided. Thus for example the renewal of a single international registration could have the effect of renewal of a plurality of registrations or grants of protection in a particular designated Contracting Party.

10. Format of documents

Canadian law

S.12 CIDR provides:

Hague Agreement (1999)

Canada could maintain the requirements of s.12 CIDR in respect of any communication the CIDO receives directly from an applicant for, or holder of, an international registration. Paragraph B.I.01.01 of the WIPO Guide (January 2012) states that communications between the applicant or holder (or representative) and the Office of a Contracting Party are outside the scope of the Hague Agreement (1999) and that the modalities of such communications are exclusively a matter for the law and practice of the Contracting Party concerned.

Under the Hague system, however, an applicant designating Canada would not be required to send to the CIDO a copy of either the international application or the international registration and Article 12(1) would prohibit the CIDO from basing a refusal on non-compliance with a requirement relating to the form or contents of the international application. With respect to communications from the IB, see the discussion above under the heading “IB communications to CIDO where Canada designated”.

Paragraph B.I.01.11 of the WIPO Guide (January 2012) states that “electronic communications between an Office and the International Bureau may take place in a way agreed upon between the International Bureau and the Office concerned”.

11. Language of application

Canadian law

S.13 CIDR provides:

Hague Agreement (1999)

S.13 CIDR is consistent with all procedures under the Hague system. Canada would be entitled to require that all communications received by it from the IB, the applicant for an international registration or the holder of an international registration be in either English or French.

VI. Filing Date

Canadian law and practice

Except for divisional applications and unless priority has been claimed, s.11 CIDR provides that the filing date of an application is the date on which the CIDO has received the following:

1) the name and address of the applicant and, if an agent is named, the name and address of the agent;

2) a title identifying the finished article or set in respect of which the registration of the design is requested;

3) a description that identifies the features that constitute the design; and

4) a drawing or photograph of the design.

In accordance with s.29 CIDA, if priority is claimed, the application has the same force and effect as the same application would have if filed on the date on which the priority application for the registration of the same design was first filed.

A divisional (separate) application filed in accordance with ss.10(3) and 11(2) CIDR has the same filing date as the initial application.

Hague Agreement (1999)

Article 14(1) provides:

“The international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party.”

The effect of Article 14(1) is that Canada would have to treat any international registration designating Canada as having met, on the date of the international registration, the Canadian requirements for a filing date.

Assuming that under Article 5(2) Canada made a declaration that it requires an international application to contain a description, the date of an international registration designating Canada would be the date by which at least the following elements have been received in an appropriate language either by the Office of the applicant's Contracting Party (if the application is forwarded to the IB within one month) or by the IB directly:

1) an express or implicit indication that international registration is sought (Rule 14(2)(b)(i));

2) indications allowing the identity of the applicant to be established (Rule 14(2)(b)(ii));

3) indications sufficient to enable the applicant or its representative, if any to be contacted (Rule 14(2)(b)(iii));

4) a reproduction, or, in accordance with Article 5(1)(iii), a specimen, of each industrial design that is the subject of the international application (Rule 14(2)(b)(v));

5) the designation of at least one Contracting Party (Rule 14(2)(b)(vi)); and

6) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application (Articles 5(2)(b)(ii) and 10(2)(b)).

S.11 CIDR would need to be amended in order for Canada to comply with the Hague Agreement (1999). In particular, Canada could not require as filing date requirements 1) the name and address of the applicant and any agent (but instead only the indications referred to in Rules 14(2)(b)(i) and (ii)), 2) a title identifying the finished article or set in respect of which the registration of the design is requested, or 3) a drawing or photograph of the design (but instead at the option of the applicant either a specimen or a reproduction).

VII. Priority

Canadian law and practice

S.29(1) CIDA provides:

S.20 CIDR provides:

Surprisingly, neither the CIDA nor the CIDR make any substantive link between the priority provisions found in s. 29 CIDA and s.20 CIDR and the other provisions in the CIDA and the CIDR. In practice, however, the CIDO gives effect to priority rights in its examination for novelty under s.6(1) CIDA which prohibits the registration of a design that is identical with or so closely resembles any other design already registered as to be confounded therewith. To be able to give effect to priority rights, the CIDO as a matter of practice delays the registration of any design until at least six months after the later of the actual filing date of the application and the priority date, if any. The practice of the CIDO is set out in the following excerpt from a 2004 practice notice (which, although no longer in effect, still accurately describes CIDO practice):

Paris Convention

Article 4A(1) provides:

“Any person who has duly filed an application for a patent … in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.”

Article 4C(1) provides: “The periods of priority referred to above shall be … six months for industrial designs …”

Article 4D provides:

With respect to the second sentence in Article 4D(5) and in particular with respect to the acceptability of requiring the number of a priority application, the following commentary is found at page 51 of Bodenhausen's Guide to the Application of the Paris Convention for the Protection of Industrial Property:

“The second sentence of paragraph (5) of the provision under consideration was added at the Revision Conference on Lisbon in 1958, in order to supplement the information to be given regarding claims for priority rights. Although the indication of the number of the previous application on which the claim for the right of priority is based completes the particulars to be given in the declaration required by paragraph (1) of the provision under discussion and has to be included in the publication prescribed in paragraph (2), the obligation to indicate such number has not been included in paragraph (1). The reason is that such indication is not always possible, and the absence of or an error in the indication of the number should not, under national legislation, automatically lead to a loss of the priority right.”

As applied by the CIDO, Canadian industrial design law with respect to priority claims generally appears to be consistent with the requirements of Article 4 of the Paris Convention. However, in view of Bodenhausen's comments referred to above in respect of requiring the number of the priority application, the argument may be made that the requirement in s.20(1) CIDR that requests for priority must include the number assigned to the priority application by the country in which the priority application was filed is, at least if interpreted as an absolute requirement, inconsistent with that Article. To avoid a possible inconsistency, it may be desirable to amend s,20(1) CIDR to specify that the number is only required if it is available.

Hague Agreement (1999)

Article 6(1)(a) provides:

“The international application may contain a declaration claiming, under Article 4 of the Paris Convention, the priority of one or more earlier applications filed in or for any country party to that Convention or any Member of the World Trade Organization.”

Article 6(2) provides:

“The international application shall, as from its filing date and whatever may be its subsequent fate, be equivalent to a regular filing within the meaning of Article 4 of the Paris Convention.”

Rule 7(5)(c) provides:

“Where the applicant wishes, under Article 4 of the Paris Convention, to take advantage of the priority of an earlier filing, the international application shall contain a declaration claiming the priority of that earlier filing, together with an indication of the name of the Office where such filing was made and of the date and, where available, the number of that filing and, where the priority claim relates to less than all the industrial designs contained in the international application, the indication of those industrial designs to which the priority claim relates or does not relate.”

Paragraphs B.II.04.56 and B.II.04.57 of the WIPO Guide (January 2012) provide:

Under Rule 7(5)(c) of the Hague Agreement (1999), the applicant is required to provide the number of the priority application only where available. To avoid a possible inconsistency, it may be desirable to amend s.20(1) CIDR to specify that the number is only required if it is available. Apart from this possible inconsistency, it would seem that any international application designating Canada that includes a priority claim complying with the requirements of the Hague Agreement (1999) would also satisfy the requirements for a request for priority under s.29 CIDA and s.20(1) CIDR.

It seems clear from paragraph B.II.04.57 of the WIPO Guide (January 2012) that Canada would be able to maintain s.20(2) CIDR, i.e. the possibility to require an applicant claiming priority to provide documents relating to the priority application.

VIII. Deferment of Publication

Canadian law and practice

Under s.21 CIDA, any person may inspect the Register of Industrial Designs and any person may obtain copies of registered industrial designs. The CIDO treats all industrial design applications as confidential and will only permit its records relating to an industrial design application to be inspected by the applicant or a person authorized by the applicant.

The CIDO will delay for some period of time the registration of an industrial design upon the request of the applicant together with the payment of the $100 fee set out in Item 9 of the Tariff of Fees. An important result of the delay of a registration is to extend the period of time that the contents of the application remain confidential, thus in effect resulting in the deferment of the publication by the CIDO of the industrial design. Neither the CIDA nor the CIDR specify a maximum period of time for which a registration may be delayed at the request of the applicant.

Hague Agreement (1999)

Under Article 10(3) and Rule 17(1), the general rule is that an international registration is published (on the WIPO website in the International Designs Bulletin) six months after the date of the international registration. An applicant may however request either immediate publication (which in fact is not truly immediate due to the time required for technical preparations for publication) or deferment of the publication.

Under Article 11(2) and Rule 16(1), the general rule is that an applicant may request deferment of publication for a period up to 30 months from the filing date or, where priority is claimed, from the priority date of the application concerned. However, under Article 11(1), a Contracting Party may, in a declaration, notify the Director General of WIPO either 1) that its law provides for the deferment of the publication of an industrial design for a period shorter than the standard 30 months, or 2) that its law does not provide for the deferment of the publication of an industrial design.

Canada will need to consider whether it wishes to make a declaration under Article 11(1). Given that neither the CIDA nor the CIDR contain any limits on how long a registration can be delayed (and thus on how long publication may be deferred) in order to make a declaration it would appear necessary for Canada to amend its legislation to specifically provide either that deferment of publication is not permitted at all or that deferment is only possible for up to a specified maximum period of time less than 30 months.

IX. Term and Renewal

Canadian law and practice

S.10 CIDA provides:

S.18 CIDR provides:

Paris Convention

Article 5bis(1) provides:

“A period of grace of not less than six months shall be allowed for the payment of the fees prescribed for the maintenance of industrial property rights, subject , if the domestic legislation so provides, to the payment of a surcharge.”

TRIPS

Article 26.3 provides:

“The duration of protection available shall amount to at least 10 years.”

The meaning of the term “protection” is set out in Article 26.1 which provides:

“The owner of a protected industrial design shall have the right to prevent third parties not having the owner's consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.”

NAFTA

Article 1713(5) provides:

“Each Party shall provide a term of protection for industrial designs of at least 10 years.”

The meaning of the term “protection” is set out in Article 1713(3) which provides:

“Each party shall provide the owner of a protected industrial design the right to prevent other persons not having the owner's consent from making or selling articles bearing or embodying a design that is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.”

Hague Agreement (1999)

In accordance with Article 17, international registrations are effected for an initial term of five years counted from the date of the international registration and may be renewed for additional terms of five years, in respect of each designated Contracting Party, up to the expiry of the total term of protection allowed by those Contracting Parties' respective laws. In the context of the Hague Agreement, the term “protection” must be interpreted in light of Article 14 which sets out the effects of the international registration.¹³

Provided that the international registration is renewed, Article 17(3)(a) requires designated Contracting Parties to provide for a total duration of protection of at least 15 years counted from the date of the international registration (which under Article 10(2) would, in the absence of irregularities, be the filing date of the international registration). In order to adhere to the Hague Agreement (1999), Canada would therefore be required to amend s.10 CIDA to provide a total possible duration of protection (within the meaning of Article 14) of at least 15 years from the date of the international registration. In making this amendment it would be important to ensure, in accordance with TRIPS Article 26.3 and NAFTA Article 1713(5), that the duration of the right to prevent making, selling or importing continues to amount to at least ten years.

The renewal of the international application may be effected for any or all of the designated Contracting Parties and for any or all of the industrial designs that are the subject of the international registration (Article 17(4)).

Fees due for the renewal of an international application are paid directly to the IB by the holder and the CIDO would have no role to play in the international renewal process.

In accordance with Article 17(5), the IB records renewals in the International Register and publishes relevant data concerning the renewal in the Bulletin. In accordance with Rule 26(3), the date on which each issue of the Bulletin is published on the WIPO website is electronically communicated by the IB to the Office of each Contracting Party. No additional information about renewals is provided by the IB to designated Contracting Parties.

Under Article 7, Canada as a Contracting Party would be entitled to receive a designation fee for each renewal of an international registration in respect of which it was a designated Contracting Party. This designation fee would be either a standard designation fee as prescribed in the Hague Regulations or, at Canada's option, an individual designation fee whose amount would be fixed by Canada. If Canada wished to receive an individual designation fee for renewals, Canada would need to so notify the Director General of WIPO in a declaration. Any such individual designation fee may not be higher than the equivalent of the amount which the CIDO would be entitled to receive for the renewal of a Canadian industrial design registration, that amount being diminished by any savings resulting from the international procedure.

X. Recordal of Changes and Other Information¹⁴

Canadian law and practice

S.13 CIDA provides:

Ss.16 and 19 CIDR provide:

The CIDO publication Industrial Design Office Practices¹⁵ states:

Hague Agreement (1999)

In accordance with Article 16(1) and Rule 21, the IB shall record in the International Register any of the following:

In respect of a request for recording of one of the above four changes, Rule 21(1)(b) provides:

The terms renunciation and limitation are explained as follows in paragraphs B.II.15.01 and B.II.16.02 of the WIPO Guide (January 2012):

Article 16(2) provides that any of the above four mentioned recordings “shall have the same effect as if it had been made in the Register of the Office of each of the Contracting Parties concerned, except that a Contracting Party may, in a declaration, notify the Director General that a recording referred to in item (i) of paragraph (1) [i.e. a recording of a change in ownership of the international registration] shall not have that effect in that Contracting Party until the Office of that Contracting Party has received the statements or documents specified in that declaration.” Accordingly, if Canada were to wish to continue to require that documentation be submitted before allowing an assignment to be registered, it would need to make a declaration to that effect under Article 16(2) and specify the particular statements or documents required.

Rule 21bis allows the Office of a Contracting Party to send a declaration to the IB that the recording of a change in ownership in the International Register shall have no effect in its territory, where such a change in ownership is not compatible with its national or regional law. The effect of such a declaration is that, with respect to that Contracting Party, the international registration remains in the name of the transferor.

There is no provision in the Hague system allowing for the possibility of recording a licence or security agreement in the International Register.

XI. Appointment of Agents

Canadian law and practice

The CIDA and CIDR do not require an applicant to appoint an agent and do not place any limitations (such as professional qualifications) on who an applicant may appoint as its agent. S.14 CIDR sets out procedural requirements for a person or firm to be recognized by the Office as the agent of an applicant.

Paris Convention, NAFTA IP Chapter, TRIPS Agreement

Nothing in the Paris Convention, the NAFTA IP Chapter or the TRIPS Agreement would prevent Canada from requiring industrial design applicants to appoint a local Canadian agent.

Article 2(3) Paris Convention, Article 1703(3) NAFTA and Article 3 TRIPS all allow a Contracting Party to make an exception to national treatment in respect of the appointment of agents. This means that countries are free to require foreign industrial design applicants to appoint a local agent without at the same time imposing such a requirement on domestic applicants.

NAFTA Chapter on Cross-Border Trade in Services

Article 1205 NAFTA prohibits local presence requirements and in particular would prohibit Canada from requiring an agent to be a resident of Canada in order to represent a industrial design applicant before the CIDO. Canada has permanent reservations to Article 1205 in respect of its current treatment of patent and trademark agents (as is permitted under Article 1206) but does not have a reservation in respect of agents acting for industrial design applicants.

Article 1210(3) NAFTA prohibits any citizenship or permanent residency requirement for the licensing or certification of professional service providers. It is to be noted, however, that the NAFTA makes a distinction between the term “permanent resident” as used in Article 1210(3) and the term “resident” which is used in Article 1205.

Hague Agreement (1999)

Rule 3(1)(a) provides that an applicant of an international application or the holder of an international registration “may have a representative before the International Bureau”. With respect to who may be appointed as a representative before the IB, the Hague system does not provide for any requirement as to professional qualification, nationality, residence or domicile.¹⁶

With respect to representation before the Office of a Contracting Party, paragraph B.I.06.02 of the WIPO Guide (January 2012) states:

“The provisions of the Hague system relate only to the representation before the International Bureau. Requirements as to the appointment of a representative before the Office of a Contracting Party (in the event, for example, that an appeal is lodged against a refusal of protection) are outside the scope of the Hague system and are exclusively a matter for the law and practice of the Contracting Party concerned.”

Rule 18(2)(vi) allows a Contracting Party to require in a notification of refusal that any request for review or appeal has to be filed through the intermediary of a representative whose address is within the territory of that Contracting Party.

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¹ https://webaccess.wipo.int/hagueform/

²See discussion under the heading “Time limits for refusal”.

³ See discussion below under the heading “FILING DATE”.

⁴ See under the heading “Effect as grant of protection”.

⁵ Paragraph B.II.09.10 of the WIPO Guide (January 2012)

⁶ See discussion below under the heading “Unity of design and divisional applications”.

⁷ See related discussion below under the heading “Unity of design and divisional applications”.

⁸ Section 6.4.5 of the version of May 10, 2010. Available on the CIPO web site.

⁹ See discussion below under the heading “APPOINTMENT OF AGENTS”.

¹⁰ Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd., [1929] S.C.R. 429.

¹¹ Section 6.4.4 of the version of May 10, 2010. Available on the CIPO web site.

¹² Form DM/1(E), available on the WIPO web site.

¹³ See discussion above of Article 14 under the heading 'Effect of international applications and registrations in Canada”.

¹⁴ Note also the discussion in Part III above concerning the possible role of competent authorities of a holder's Contracting Party in making attestations concerning changes in ownership.

¹⁵ Version of May 10, 2010. Available on the CIPO web site.

¹⁶ Paragraph B.I.06.03 of the WIPO Guide (January 2012).