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.
Centralization
National/Regional Route
International Route
Applicant
Applicant
Office
Office
Office
A
B
C
Territory
Territory
Territory
Territory
Territory
Territory
A
B
C
A
B
C
December 24, 2013
Hague System Today
46 Geneva Act (1999) (including EU and OAPI)
15 Hague Act (1960)
61 Contracting Parties
2014 – 2016?
Hague System Tomorrow?
53 Geneva Act (1999) (including EU and OAPI)
15 Hague Act (1960)
68 Contracting Parties
Interesting Times
“Complexification”
With the arrival of the examination systems (Korea,
US, Japan, China), it will not longer be a one-size-fitsall 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
www.wipo.int/hague/en/members/
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
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 System
for the
International Registration
of
Industrial Designs
Hague Agreement
London Act (1934)
“Frozen” as of 1 Jan 2010
Hague Act (1960)
Primarily European
Geneva Act (1999)
Entered into force on 23 Dec 2003
Operational on 1 Apr 2004
Treaty 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
Direct Filing
Registration
International
Application
Indirect Filing
OFFICE OF
APPLICANT’S
CONTRACTING
PARTY
SECURITY CLEARANCE
Self-Designation
INTERNATIONAL
BUREAU
Designations
OFFICE OF
DESIGNATED
CONTRACTING
PARTY
OFFICE OF
DESIGNATED
CONTRACTING
PARTY
FORMALITIES EXAMINATION
International Register
Certificate of International Registration
Publication
(immediate; standard; deferred)
SUBSTANTIVE EXAMINATION
www.wipo.int/madrid/en/forms/
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
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/e
n/forms/
www.wipo.int/hague/en/members/
10
DESIGNATED
CONTRACTING
PARTIES
DECLARATIONS
i
!
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
www.wipo.int/ipstats
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
2013 Key Figures
Applications/Registrations
DESCRIPTION
NUMBER
GROWTH
2012-2013
Designs Contained in
Applications/Registrations
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 %
ADDITIONAL INFORMATION
www.wipo.int/hague
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/en/forms/intermediate.html/
E-Filing: Video Tutorials
ALAN DATRI
IPDatri@att.net
Memphis, TN
(901) 201 6696
Washington, DC
(202) 657 6763