Registered designs, like patents, have an international filing system which allows IP owners to obtain protection in multiple territories by filing a single application.
This is particularly beneficial if a company’s or designer’s consumer base is spread across multiple countries and protection is needed in multiple territories.
What is a registered design?
Registered designs protect the look of a product. This may include for example the appearance, the physical shape, the configuration (how different parts are arranged together) or the decoration of a product.
Design rights are territorial rights and give the owner of the registration an exclusivity over the use of the protected design.
The Hague System
The “Hague System for the International Registration of Industrial Designs” (usually shortened to “Hague System”) is administered by the World Intellectual Property Office (WIPO) and stems from two legal agreements: The Geneva Act (1999) and the Hague Act (1960).
Overall, these two agreements have 75 contracting members for a total of 92 countries.
The Hague System allows to obtain protection for industrial designs in several contracting members by means of a single international application filed with the International Bureau of WIPO in Geneva.
Hence, an international application filed under the Hague System substantially replaces a bundle of design applications which would otherwise need to be filed with each individual national office.
To be entitled to use the Hague System, the design holder must be a national of, be domiciled in or have a business in one of the Contracting Parties.
How to file an application under the Hague System
An international design application can be filed using the online eHague portal.
Designs are classified according to the Locarno Classification. An international application can contain up to 100 different designs as long as they all belong to the same Locarno class.
A fee must be paid in order for the international application to be processed by the International Bureau and the designated parties. The amount of the fee varies based on the number of designs and on the number of contracting parties designated in the application. WIPO has made available a very useful fee calculation tool to check in advance the exact amount.
An international application can also claim priority from a previous design application if filed within 6 months from the filing date of the previous application.
After filing
The international Bureau conducts a formal examination to check that the international application complies with all formal requirements and that fees have been paid. If everything is in order, the application is published in the International Designs Bulletin, after which each designated party can start substantial examination.
Each national office determines whether or not the design can be registered in accordance with the domestic legislation and different procedures apply for each territory. In some cases, a local representative will need to be appointed in order to comply with the national procedures.
Each designated office must communicate to WIPO the acceptance or refusal of the design within a prescribed period.
Once the application is accepted by a national office, the effect of the international registration is the same as that of a registered design obtained by filing a direct application at that office.
The initial duration of an international registration is 5 years. The registration can then be renewed for one or more additional periods of five years in respect of each party. The total term of protection varies from party to party, hence the registration may only be renewed with respect to some parties.
Some territories require fees to be paid at each renewal whilst some other territories do not require any fee after the initial filing fee.
Advantages of the Hague System
The Hague system allows owners to obtain protection for their design with minimum expenses and formalities. By using the centralized eHague System , it is possible to pay all fees in one currency. Moreover, applicants can avoid procedural complexities arising from procedures which are different from state to state.
All documentation can be filed to the international bureau in one of the official languages (English, French or Spanish) and, unless objections arise or the local law requires specific procedures which can’t be complied with at the IB, the design can be granted without having to appoint a local representative.
By having a single international registration with effect in several Contracting Parties, the subsequent management of the registration is also much simpler. For example, a change of ownership or of the address of the holder can be recorded in the International Register and have effect in all the designated Parties.
Conclusions
With the advent of online marketplaces, almost everyone from large corporations to SMEs and even lone designers now have access to a worldwide consumer base.
Hence it is important for design owners to consider protecting their design(s) in multiple countries.
If you are considering protecting your design abroad, you should discuss your options with your patent attorney and identify what is the best route for you. The Hague System may offer a cheaper and more straightforward route than filing than filing in each country separately.
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!