hague system for the international registration of industrial designs alan datri
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Hague System for the International Registration of Industrial Designs
Alan Datri
BASICS
Centralization
The centralized acquisition, maintenance and management of industrial design rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated.
Allows right holders to target national, regional or global markets with respect to particular goods.
Cost-effective and efficient (at the front and back ends), thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large.
Enhanced by various on-line services on the Hague system pages of the WIPO website: e-filing; e-payment; e-renewal, etc.
Applicant
Territory A
Territory B
Territory C
Applicant
Territory A
Territory B
Territory C
Office A
Office B Office C
Centralization
National/Regional Route International Route
Hague System Today
46 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960)
61 Contracting Parties
December 24, 2013
Hague System Tomorrow?
53 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960)
68 Contracting Parties
2014 – 2016?
Interesting Times
“Complexification”
With the arrival of the examination systems (Korea, US, Japan, China), it will not longer be a one-size-fits-all system.
Jumpstarting Harmonization
Possible design law treaty resulting from the work of the SCT
Advocating “best practices” among offices
“Intelligent” electronic tools to navigate the differences
Declarations under the Geneva Act
Prohibition on filing through Office and/or self designation
Required views (< 6/1)
Special Requirements regarding applicant or creator
Additional Mandatory Requirements: (i) indications of identity of creator; (ii) brief description and/or (iii) claim
Fee structure: standard designation (3) or individual
Security clearance
Deferred publication less than 30 months or no deferment
Time for notifying refusal and commencement of grant of protection
Unity of design
Effect of change in ownership
Maximum duration of protection
www.wipo.int/hague/en/members/
Putting Things in Perspective
Simple in concept
Accommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right
Can be complex in implementation and use
Not surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems
Practitioners, Practitioners, Practitioners
Proper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel
INTERNATIONAL LEGAL FRAMEWORK
Hague Systemfor the
International Registrationof
Industrial Designs
Hague AgreementLondon Act (1934)
“Frozen” as of 1 Jan 2010Hague Act (1960)
Primarily EuropeanGeneva Act (1999)
Entered into force on 23 Dec 2003Operational on 1 Apr 2004Treaty of the future
Common Regulations (1996)
Last revised: 1 Jan 2014
common definitions
differentiates requirements
Admin. Instructions (2002)
Last revised: 1 Jan 2014
National Laws & Regulations
Closed System
Entitlement
Must have a connection with a Contracting Party of a treaty
Real and Effective Industrial or Commercial Establishment (“Establishment”)
Domicile
Habitual Residence
Nationality
Extension of Protection
Can only designate Contracting Party with a common treaty
Registration
OFFICE OFDESIGNATED
CONTRACTINGPARTY
SUBSTANTIVE EXAMINATION
InternationalApplication
FORMALITIES EXAMINATIONInternational Register
Certificate of International RegistrationPublication
(immediate; standard; deferred)
OFFICE OF APPLICANT’S
CONTRACTING PARTY
SECURITY CLEARANCE
OFFICE OFDESIGNATED
CONTRACTINGPARTY
INTERNATIONALBUREAU
Designations
Self-Designation
Indirect Filing
Direct Filing
Maintenance and Management
Renewal (5 years) – DM/4
Appointment of a representative – DM/7
Change of name and address or holder or representative – DM/6
Record transfer of ownership – DM/2
Statements or documents may be required
Limitation of designs in one or more DCPs – DM/3
Renunciation of all designs in one or more DCPs – DM/5
www.wipo.int/madrid/en/forms/
International Registration: Effects
As a national/regional application
As of the date of the international registration
As a grant of protection
No Refusal
Date of expiry of refusal period (6 or 12 months), at the latest,* but can be later (if “examining Office” or opposition)Date of optional statement of grant of protection prior to expiration of refusal period
Refusal
If overcome, date of withdrawal/statement of grant of protection, at the latest*
* “At the latest”: grant could be earlier, e.g., date of international registration
International Registration: Duration
Initially valid for 5 years from date of international registration
Minimum duration of protection set by governing treaty
3 x 5-year term = 15 years
Maximum duration of protection set by national/regional law of each DCP
6 months before the expiration of a 5-year term, the IB unofficially notifies holder of the maximum duration of protection in each DCP
FILING
http://www.wipo.int/hague/en/forms/
10
DESIGNATED CONTRACTING
PARTIES
DECLARATIONS
!i
www.wipo.int/hague/en/members/
7 8
REPRODUCTIONS OF DESIGNS
LOCARNO CLASS and SUB-CLASS(ES)(if latter known)
Reproductions: General Requirements
Mode
Photographs or graphic reproductions
B&W or color
Requirements
Industrial design alone at the exclusion of all else
Against a neutral/plain background
Technical drawings, particularly those showing axes, dimensions, explanatory text or legends unacceptable
May include shading and hatching
Dotted or broken lines or the text of the description may depict matter not claimed
Reproductions: Published in Bulletin
USE
2014 Hague Yearly Review
Highlights
Summary of System
Use of Hague System
Administrative Procedures, Revenue and Fees
Relevant Developments in Membership and Legal Framework
Annexes
www.wipo.int/ipstats
2013 Key Figures
DESCRIPTION NUMBER GROWTH 2012-2013
NUMBER GROWTH 2012-2013
INTERNATIONAL APPLICATIONS 2,990 +14.8 % 13,172 +5.8 %
INTERNATIOAL REGISTRATIONS 2,734 +12.0 % 12,806 +7.0 %
DESIGNATIONS IN INT. REGISTRATIONS 15,081 +17.9 % 65,726 +8.9 %
INTERNATIONAL REGISTRATIONS IN FORCE
26,877 +2.3 % 111,881 +1.6 %
Applications/RegistrationsDesigns Contained inApplications/Registrations
ADDITIONAL INFORMATION
www.wipo.int/hague
Self-Study
Hague Yearly Review, International Registration of Industrial Designs (930E/14)
Objectives, Main Features, Advantages of the Hague System (911)
DM/1 - International Application
DM/1.inf - Explanatory Notes to DM/1
Guide to the International Registration of Industrial Designs under the Hague Agreement
Legal Texts - Geneva Act (1999); Common Regulations; Administrative Instructions
www.wipo.int/hague
www.wipo.int/hague/en/forms/intermediate.html/
E-Filing: Video Tutorials
