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Advantages & Disadvantages of the Hague Agreement International Registration of Industrial Designs – a users’ view

Keith HodkinsonMarks & Clerk LLP11 February 2011

Contents

• An overview of the Hague System from the user’s perspective• Pre-Filing Considerations• Representation • Filing & Formal Examination Procedure • International Registration, Publication & Refusal Procedure• Managing an International Registration• Summary of Advantages and Disadvantages of the Hague System

Overview of the Hague System from the user’s perspective

Aims of the Hague System – what to judge it against

To provide for the centralised acquisition, maintenance & management of industrial design rights around the world through a single international application having effect in one or more designated Contracting States.

To remove the need to file a series of individual National/Regional applications.

To provide an international system which is:• Economical• Flexible • Simple (minimal formalities)

Does it achieve this? Not entirely…

• Primarily a procedural arrangement so no harmonisation of substantive laws implicit in the System (compare RCD)

• Closed system - Applicant must be entitled to file an International Application (IA) by having a connection with a Contracting Party (CP). Also limits possible assignees of the right (compare RCD).

• Results in a “Bundle of Rights” - An International Registration (IR) has the effect of a grant of protection in each designated Contracting Party (DCP) so no domino effect but no central enforcement (compare RCD).

• Many different texts, qualification permutations, complex fees

What it does not claim to be…

The Hague System does not determine:• the conditions for protection• the refusal procedure which applies when deciding whether a design

may be protected• the rights which result from protection

These issues are governed by the law of each Contracting Party (CP) designated in an International Registration (IR)

So no harmonisation of substantive law implicit in the System (Bad!) BUT

No requirement for a prior national application or registration (Good!)

Legal Framework - complex

The Hague System comprises:

• Hague Agreement- London Act (1934) – fast disappearing- Hague Act (1960)- Geneva Act (1999)

• Common Regulations (1996)

• Admin. Instructions (2002)

• National Laws & Regulations

Geographical Scope – very limited

1 January 2008 European Community acceded to 1999 A ct

As of 1 February 2011: 58 Members – but how many are “useful”?

And how many are more useful than a simple RCD?

http://www.wipo.int/hague/en/members/

Member States – note the omissions!

The key filing countries for designs on my client’s list outside Europe are not members:

• Japan• USA• PR China• South Korea

Expansion???

Membership of the Hague System is steadily rising. The 1999 Act included a number of provisions to make the System suitable for Intergovernmental Organisations (e.g. EU) to join and also for countries like the US and China to join in the future, including provisions for…..

• The filing to be in the name of the creator• The inclusion of a description of the design• A claim to be mandatory

• BUT apart from the EU they have not joined yet!

• You cannot extend the design to new members because it will be lacking novelty

London going…..Geneva coming

Members are leaving London Act, joining Geneva.

UK never joined London! (despite the hint….)

Even without the London Act, on filing an International Design it will continue to be important to check which potential designated States share the same version of the Agreement as the country of the filer. For example, the British can only designate Geneva Act states. But every little simplification helps.

Pre-Filing Considerations

Entitlement – the matrix

• Who may file an International Application?- Any natural person or legal entity that has a connection with a

Contracting Party (CP) through:• Nationality• Domicile• Real & Effective Industrial or Commercial Establishment• Habitual Residence (under 1999 Act only)

• The CP through which the applicant derives entitlement is known as:- The ‘State of Origin’ (1960)- The ‘Applicant’s Contracting Party’ (1999)These states are relevant to where an IA can be filed.

Deciding which Act will govern the International Ap plication

• It is only possible to designate CPs which are party to an Act which is also an Act of the CP through which the Applicant claims entitlement.- e.g. if entitlement through EU only

can only designate states party to 1999 Act

• Each designation will be governed by one Act only.- The Act which applies in each case is the latest Act common to both

the DCP and the CP through which entitlement is claimed.

• Individual designations may be governed by different Acts and so the IA as a whole may be governed by more than one Act.

So still a bit complicated in some cases – especially for your paralegal!

Example 1: 1 Applicant with Entitlement through 1 C P

• Entitlement- Spain (1934, 1999)

• Designated Contracting Party- Switzerland (1934, 1960, 1999)- Germany (1934, 1960)- Tunisia (1934)- Italy (1960)

• Governing Act- 1999- 1934- 1934- None (designation not allowed)

Claiming Multiple Connections

• An Applicant can claim entitlement through more than one Contracting Party.

• Under the 1960 Act, the ‘State of Origin’ is determined as:- the CP to the 1960 Act in which the Applicant has a real and effective

industrial or commercial establishment; or- if he has no such establishment in such a state, the CP to the 1960 Act

in which he has his domicile; or- if he has neither of the above in such a state, the CP to the 1960 Act of

which he is a national.

• Thus, under the 1960 Act, the Applicant is not free to choose his ‘State of Origin’ in the case of multiple entitlements.

The ‘Applicant’s Contracting Party’ (1999)

• Under the 1999 Act, the Applicant is free to choose his CP in the case of multiple entitlements.

• e.g. If domicile in CP A (bound by 1999 Act) and nationality in CP B (bound by 1999 Act),Applicant can indicate either CP A or CP B as ‘Applicant’s Contracting Party’

Example 2: 1 Applicant with Entitlement through 2 C Ps

• Entitlement- Spain (1934, 1999) - Germany (1934, 1960)

• Designated Contracting Party- Switzerland (1934, 1960, 1999)- Turkey (1999)- Italy (1960)

• Governing Act- through ES 1999 + through DE 1960 -> 1999- through ES 1999 -> 1999- through DE 1960 -> 1960

Multiple Applicants – giving and taking away!

• Two or more parties (whether natural persons or legal entities) may jointly file an IA, provided that- each of them can establish an entitlement through a CP bound by the

same Act or Acts

• The CP need not be the same; nor the nature of entitlement.

• BUT they can only designate CPs to which they are both entitled

Example 3: 2 Applicants each with Entitlement throu gh 1 CP

• Entitlement- Applicant 1: France (1934, 1960, 1999) - Applicant 2: Germany (1934, 1960)

• Designated Contracting Party- Liechtenstien (1934, 1960, 1999)- Greece (1960)- Indonesia (1934)- Singapore (1999)

• Governing Act- 1960- 1960- 1934- None (designation not allowed)

Impact of accession by the European Community

• The EU is one Contracting Party, which is independent of its member states. It is not possible to designate individual member states of the EUif they are not also individual members of the Hague Agreement (GB!)

• The EU is only bound by the 1999 Act. Anyone able to claim entitlementthrough the EU is only able to designate other CPs also bound by the

1999 Act, so limits the range for EU members

• They are only able to designate CPs bound by other Acts if they can also claim entitlement to another CP which is bound by the Act in question

Representation

Representation before the IB – very open but not eff icient

• Representation before the IB not compulsory; no provision regarding; competence or qualification; no provision regarding geographical location

• AND Foreign Attorney only needed if IR refused in DC

• BUT Appointment of Representative must be signed by Applicant/Holder

• AND General Power of Attorney not accepted and you must specify IAs/IRs to which appointment applies

• AND Can only appoint one Representative- this may be a partnership/firm- when new Representative appointed previous appointment cancelled

•AND representation will be cancelled unless re-appointed on change of ownership

Filing & Formal Examination Procedure

Where to file – flexible for some but not for us in EU!

• Direct Filing- at the IB

• Indirect Filing (1960)- if CP so permits- CP that is ‘State of Origin’ may require that application be filed through it- filing date is date of receipt at IB

• Indirect Filing (1999)- via ‘Applicant’s Contracting Party’- CP may charge transmittal fee + may restrict language of filing- filing date is date of receipt at CP (if timely forwarded to IB)- CP may extend 1 month period to forward IA to IB to 6 months if security

clearance required- CP can prohibit indirect filing (but cannot require it)- OHIM has prohibited indirect filing

Filing Date – a hidden twist!

• If not all DCPs are party to 1999 Act, you need to file with IB to get date of receipt as date of filing

Possible Additional Requirements for Filing Date (before certain DCPs)

Under the 1999 Act the following additional mandatory contents may be required by DCPs: • Identity of the creator• Description of Design• Claim

Such mandatory requirements are indicated on the application form. BUT lack of consistency is an issue.

If such contents are required by CPs they must make an appropriate declaration to the IB. A list of all declarations made by CPs can be found at http://www.wipo.int/hague/en/members/

Contents of the Application

• Always said the application must be in English or French and that it is the Applicant’s choice (unless restricted in case if indirect filing)

- BUT French is compulsory if application governed exclusively by 1934 Act

• Advisable to include all possible entitlements in the application

• To appoint a Representative application form must be signed by applicant or accompanied by a power of attorney signed by the applicant

• Multiple designs (up to 100) permitted in one application- must be in same class (Locarno Classification) – compare RCD

Contents of the Application

• Must indicate the products to which the industrial designs relate

• Must include the designations of all CPs where protection is sought

• Self-designation is possible but may be prohibited by a CP (1999)

• Can claim priority from earlier national/regional/international applications- priority documents not required (Good!)

• Applicant may request that publication be deferred- for up to 12 months (1960 Agreement)- for up to 30 months (1999 Agreement)from the date of filing or, if claimed, from the priority date. BUT See later!

Application Fees

• Basic Fee• Publication Fee• Description Fee (if >100 words)• Standard Designation Fee (Level 1/2/3) OR Individual Designation Fee

- Level 1: No SE- Level 2: SE (other than for novelty)- Level 3: SE (for novelty or following opposition)

Different fee structure for applications governed exclusively by 1934 Act.

• For a table of all fees & a useful (essential!) fee calculator go to…http://www.wipo.int/hague/en/fees/

Form of Paper reproductions

• Content – compare RCD (bad!) and USPTO (good!)- Industrial design alone – more limited than RCD?- Design shown against neutral background- Maximum dimensions 16 x 16cm (one dimension at least 3cm)- Technical drawings with axes/dimensions not accepted- Explanatory text/legend not accepted (compare RCD)- Disclaimer (in form of dotted/broken lines or in description) permitted

where protection not sought for all matter shown

• Quality- Photographs or other graphic representations- In black & white or colour- Suitable for publication

Presentation of Reproductions – paper filing

• Single copy

• Pasted or printed directly on separate sheet of A4 paper which is white or opaque and is used upright

• Numbered ‘Design No’.’View No’ (i.e. 1.1, 1.2, 1.3… for the 1st design, 2.1, 2.2, 2.3… for the 2nd design) and presented in ascending numerical order, in the orientation in which they are to be published

• 5mm clearance should be left around each view

• Each view must fall within a right-angled quadrilateral containing no other views

Now we have e-filing – Good Good Good

Advantages over filing a paper application:

•faster grant;

•lower fees when the application contains many reproductions of the industrial designs to be registered (since reproductions submitted on paper are subject to a fee for each page beyond the first);

•automatic checking of much of the information provided, reducing the likelihood of errors.

•Reps may not satisfy other countries such as USA and China and Japan

E filing representations

Pixel count must print at 16 x 16cm maximum

Must be at least 3cm in one direction

100 limit still applies in paper or efiling

Correction of Irregularities

• Beware of the impact on publication fees – severe penalties

• A request for new reproductions is not a request for new representations (cannot show views which were not shown before)

• DCPs cannot Refuse IR on the grounds of requirements relating to theform of reproductions which have not been notified to IB

•So much more restrictive than say the RCD

Formal Examination by IB

• IB checks application complies with formal requirements

• Usually given 3 months to respond to Notice of Irregularity- if no response, application deemed abandoned

International Registration, Publication & Refusal

International Registration

• An International Application which complies with the formal requirements is recorded in the International Register.- the date of the International Registration is the filing date of the

International Application

• The IR is published in the International Designs Bulletin- publication takes place via WIPO’s website. Compare WIPO site

search tools with RCD

• The date of issue of each Bulletin is communicated to the Office of each CP.

Publication

• General rule: Publication is 6 months after International Registration (i.e. 6 months after filing) - much slower than RCD

• Request for early publication possible – takes ~2 months

• Deferment of publication- 1934: no deferment possible- 1960: maximum period of 12 months- 1999: up to 30 months (if <30 months, CP must notify IB) BUT

• Publication will take place after the shortest defe rment period of all DCPs- e.g. 1 DCP under 1960 + 1 DCP under 1999 -> deferment cannot exceed 12m- might want to file 2 applications, each covering different DCPs

(1 of which will enjoy deferred publication + 1 of which will not)

Substantive Examination (SE) by DCP

• Upon publication each Office identifies the International Registrations in which it has been designated and carries out substantive examination (if any) in accordance with its own legislation.

• As a result of SE, the Office may notify the IB of refusal of protection in its territory.- No refusal on formal grounds or on grounds relating to the form of reproductions (these are considered satisfied by IB Examination)- Refusal, if any, must be notified to IB within 6 months of publication- 6 month period may be replaced by 12 month period if Office examines for novelty or if national law provides possibility of opposition (1999)

SO could be slower than going to the RCD direct!!!

• IB records notice of refusal in Register and forwards it to holder

Grounds for Refusal

• Each CP has the right to issue a refusal on substantive grounds- total or partial

• Refusals only have effect in the territory concerned

• Refusals may be based on an objection by an Examining Office or on an opposition (if provided for under national law)

• The possibility of opposition and all other mandatory requirements must have been notified by the CP to the IB

Grounds for Refusal

• Additional Mandatory Requirements notified to IB:- Identity of creator (Romania…)- Brief description (Romania…)- Requirement of unity of design (Estonia, Kyrgyzstan, Romania…)- Certain views of design required (none)- Extension to 12 month refusal period (Iceland, Kyrgyzstan…)

• Refusal may be on grounds of, for example:- lack of novelty- design not sufficiently disclosed

Notification of Refusal

• Must be dated and signed by the Office concerned

• Must contain number of International Registration

• Must contain all grounds on which refusal is based- along with reference to the corresponding provision of the law

• Must contain information relating to earlier design if refusal based on similarity with another design

Remedies in case of Refusal

• In event of a refusal, the holder of the IR has the same remedies as would be available under national law (i.e. if application had been filed directly with the national Office concerned).

• If holder contests refusal, subsequent procedure takes place directly between the holder and the Office concerned.- local representation may be required

• If Office withdraws refusal and grants protection in its territory, this is communicated by the Office to the IB who forwards it to the holder- withdrawal of refusal recorded in International Register and published

in Bulletin

Protection Conferred by IR

• In each DCP which has not issued a refusal (or if the refusal has been withdrawn), the IR has the same effect as a grant of protection for an industrial design under the law of that Contracting Party.

Quirks in some important places

e.g.

Unity - SG.

Deferral of publication - DK, NO, PL, SG

Descriptions - RO

Effects of an International Registration

• As an Application- from the date of International Registration (i.e. filing date)

• As a Grant of Protection- Geneva (1999)

- If no refusal, as of date of expiry (at the latest) of the applicable refusal period (6/12 months)

- Period may be extended up to 6 months after above expiry date if DCP examines for novelty

- May be even later in certain limited circumstances (Radiator Clause)- Alternatively, from date on which refusal withdrawn

- Hague (1960)- By default, as of date of IR- May be date of expiry of refusal period (or earlier) if DCP examines for

novelty

Managing an International Registration

Central Management – flexible and simple forms

• Appointment [DM/7] or cancellation [DM/9] of Representative before IB

• Change of name or address of Holder [DM/6] or Representative [DM/8]

• Change of ownership in respect of one or more DCP and in respect of one or more designs [DM/2]

• Limit number of designs in one or more DCP [DM/3]

• Renounce all designs in one or more DCP [DM/5]

• Renew IR [DM/4]- Form not necessary: payment (by anyone) enough (Good!)

E renewals (good!)

• As of December 23, 2010, an electronic interface for the online renewal of international registrations, is at https://webaccess.wipo.int/erenewal_dm/

• The e-renewal interface calculates the fees accordingly and allows users view the reproductions of the industrial designs contained in the registration.

• The e-renewal interface allows the payment of the renewal fee either through a current account opened with the International Bureau or by credit card.

• It will remain possible to request the renewal of an international registration in writing using the DM/4 form or simply through the payment of the renewal fees.

Recording Changes

• Requests for recording changes must be presented on the relevant form and the prescribed fees paid

• If CPs declare that they have a requirement for specific statements/documents, these must also be filed

• Changes will be recorded in the International Register and published in the International Design Bulletin

• Recordal in the IR has same effect as in National Registers

• Is it possible to correct a mistaken change of name/address recordal?

Change in Ownership

• New owner must be entitled through CP to a relevant Act- in respect of each DCP of each IR concerned

• e.g. Holder CP: France (34/60)Transferee CP: Iceland (99)

DCP: Spain (34/99) DCP: Germany (34/60)DCP: Switzerland (34/60/99)

-> transfer not allowed-> transfer not allowed -> transfer allowed (99)

• Cannot change governing Act if it involves 1934 designation

• Can change governing Act between 1960 and 1999 designations - only if DCP bound by both at date of IA

Requests for Change in Ownership

• No documentation required for recordal of change in ownership- unless CP has made specific declaration (Has it? You must check)

• If recordal requested by holder:- must be signed by holder

• If recordal requested by new owner:- must be signed by holder, or- signed by new owner + include attestation from competent authority

• Representation will be cancelled unless re-appointed on change of ownership.

Duration of Protection

• IR initially in force for 5 years from date of IR (i.e. date of filing)

• Renewable for subsequent periods

• Minimum duration set by governing Act- 1934: 15 years (5 + 10) {equivalent to maximum duration}- 1960: 10 years (5 + 5) {calculated from date protection granted}- 1999: 15 years (3 x 5)

• Maximum duration under 1960 and 1999 set by each DCP- equivalent to duration allowed under National law in DCP

• Renewal reminders sent to holder and representative – good and bad!

Advantages of the Hague System

Advantages of International Route over National/Reg ional Route

• One Office for filing• One application• One set of representations• One procedure• One language• One currency• One registration• One renewal• One recording of changes

Further Advantages

• No prior national filing required• Minimal formalities and drawings standards• Multiple applications possible• Deferred publication may be possible• Foreign Attorney only needed if IR refused

• Refusal or nullification in one DCP does not automatically affect validity in other DCPs

• Cheaper than pursuing several national applications in many places

Summary of Disadvantages

• Closed system – must be entitled to use System

• Complexity of System- different laws in designated states- different scope of protection, jurisdiction, sanctions, period of

protection… in DCPs- costs and fees calculator essential

• Scope of Contracting Parties not particularly attractive at present

• In EU, direct into RCD may be better

Useful Resources

• International Designs Bulletinhttp://www.wipo.int/hague/en/bulletin/search-struct.html

• Hague Express Database (IR Search)http://www.wipo.int/ipdl/en/search/hague/search-struct.jsp

• Legal textshttp://www.wipo.int/hague/en/legal_texts/

• Guide to the Hague Agreementhttp://www.wipo.int/hague/en/guide/

• Main Features & Advantages Booklethttp://www.wipo.int/hague/en/general/

Any questions…?

Keith HodkinsonMarks & Clerk LLP

khodkinson@marks-clerk.com