Obtaining protection for industrial design rights in multiple jurisdictions via the national route may be time consuming and costly. The Hague System for the International Registration of Industrial Designs offers a more efficient and cost effective route for the registration of design rights in any, or all, of the 77 contracting parties to the system through the filing of a single application.
The Hague System was established by the Hague Agreement, adopted in 1925, and is now governed by the Hague Act of 1960, and the Geneva Act of 1999. The contracting parties privy to the Hague System cover 94 countries in total. Through the system, applicants may file one international design application designating the contracting parties in which protection is sought. Moreover, the system proves useful for not only the filing and registration of industrial design rights, but for portfolio management directly with the International Bureau of the World Intellectual Property Organisation (WIPO) as well, for example, design renewals and recordals of changes.
In order to be eligible to file for industrial design protection by way of the Hague System, an applicant must be a natural person or legal entity, which is either a resident of a contracting party, a national of either a contracting party or a member state of a contracting party, or have an effective business in a contracting party.
International applications can be filed with the International Bureau of WIPO either directly or through the IP office of the Contracting Party of origin, and should be submitted in any of the official languages of the Hague System, namely English, French, or Spanish. There are three standard sets of fees involved in filing for design rights through the Hague System, consisting of a basic fee, designation fees for each state respectively, and a publication fee, all of which are payable in Swiss Francs.
An international application can include up to 100 designs, so long as they are all within one class of the Locarno Classification, and must detail at least one reproduction of each design. A reproduction of a design can be in the form of photographs, drawings or other graphic representations of the designs. It is important to note, however, that some jurisdictions may not have provisions for the registration of multiple designs. In that case, the international registration may be divided before the Office of such jurisdiction in order to overcome the refusal ground, with this division not affecting the international registration itself.
Priority may be claimed in relation to an earlier application so long as it was filed with a member state of the Paris Convention or the World Trade Organisation, and if the international application is filed within a 6-month period following the filing of the priority application.
Once received by the WIPO, the application will be checked as to the basic formal requirements, such as payment of the relevant fees, and the quality of representation of the designs.
Upon completion of formal examination of the design by WIPO, the application will be published in the International Designs Bulletin, 6 months after the filing of the international application unless immediate publication or deferment thereof is requested by the applicant. Notice of publication will be sent to each designated office, which will check the publication accordingly.
The decision for registration of a design itself is taken by each designated state individually as per the substantive requirements set forth by national or regional legislation. As such, if an application does not result in registration in one jurisdiction, this does not impact the status of the design in any other designated state.
Each jurisdiction will therefore conduct substantive examination of the design, if any is stipulated, and will notify the applicant if their design has been refused protection within a period of 6 or 12 months from the date of publication, depending on the designated state. Any response to a refusal is dealt with directly between the applicant and the designated office and does not involve WIPO. If an applicant is not notified of a decision of refusal by the expiry of the prescribed time period, design protection is considered granted in that particular jurisdiction.
Once granted, an international design has the same effect in each designated state as it would if it were filed directly in that jurisdiction. International designs are valid for an initial period of five years from the date of the international registration, which is counted as the date of filing of the international application. Design rights may be renewed for further five-year periods, up to the limit of years prescribed in the national or regional law of each designated state.
The WIPO will also remind the right holder to renew a design, six months prior to the due date of the renewal.
Industrial design protection has become ever more prevalent owing to recent times, particularly in relation to laboratory and medical equipment which saw an increase in filings of 45% in 2020. As such, individuals and organisations looking to protect their designs may benefit substantially from using the Hague System to obtain protection in multiple countries, as it provides for a less costly alternative to filing in individual states and can be submitted in various jurisdictions in one language. Further, the System also enables applicants to obtain design protection through the WIPO with fewer formalities than if filed with each state respectively, and also simplifies the maintenance process.
If you are looking to file for design protection through the Hague System, please contact us for further information.