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INTERNATIONAL DESIGN REGISTRATION - THE HAGUE AGREEMENT

INTERNATIONAL DESIGN REGISTRATION - THE HAGUE AGREEMENT

The Hague Agreement is a system which enables design owners who belong to certain countries to apply centrally for designs for a number of states and/or intergovernmental organizations (in particular the European Union Intellectual Property Office (previously known as OHIM)), rather than having to make separate applications for each state and/or intergovernmental organization.

The European Union Intellectual Property Office (EUIPO) and the Hague Agreement

There are three different acts under which the Hague Agreement operates:

  • The London Act of 2 June 1934
  • The Hague Act of 28 November 1960
  • The Geneva Act of 2 July 1999

The three acts are independent of each other; some states are party to only one act, some to two, and others all three.

The EUIPO has only signed up to the Geneva Act, and so for UK design owners only the states and intergovernmental organizations (“contracting parties”) governed by the Geneva Act can be designated

This information page relates only to the Geneva Act.

Who can use the system?

It is not open to everyone; the applicant has to be

a) a national of a contracting party, or
b) have a domicile in the territory of a contracting party, or
c) have a real and effective industrial or commercial establishment in the territory of a contracting party, or
d) habitually resident in a contracting party

How does one apply?

The application is filed directly at the World Intellectual Property Organization in Geneva.  Unlike the International Registration system for trademarks, no home application or registration is required.  Up to one hundred designs can be included in the same application, provided that they are all for the same class of designs (according to the International Classification of Industrial Designs).  Note however some contracting parties have particular requirements which will mean in some circumstances the International Registration will not be effective for all the designs for that contracting party.  In particular, the United States has no provision for multiple designs. Official fees are payable and depend upon the number of designs, whether publication is to take place immediately and the particular contracting parties designated.

There is no limit on the number of representations that can be included for each design. It is possible to enter disclaimers. It is also possible to include a description of the design and/or include the identity of the creator of the design; for some contracting parties inclusion of one or both of these is mandatory.

Deferment of publication

It is possible in some cases to request that the publication of the designs be deferred by up to 30 months from the filing date, or, where priority is claimed, from the priority date.  However some contracting parties have a shorter deferment period, and some do not allow deferment at all.

Formal examination by WIPO

WIPO will check that the application complies with its formal requirements, in particular the payment of the official fees and the quality of the representations of the designs in the application form.  Note that WIPO does not examine on substantive grounds; it is for the national offices to reject designs, for example on the grounds of lack of novelty.

Procedure after formal examination by WIPO

Once formal examination has been concluded, and any formalities objections have been dealt with, the application is recorded in the International Register and is published.  Publication takes place electronically on WIPO’s website, in the International Designs Bulletin which is published weekly.  Publication normally takes place six months after registration (to reflect the fact that there is often a similar delay under national law, in order that designs are not immediately made public).  A request can be made for publication to take place as soon as possible.  Conversely, depending upon the designated parties, deferment can be requested.

It is then up to the designated offices to check the publications on the internet and identify those designs in which they have been designated.

The designated offices have six months to issue a notice of refusal to WIPO that the design does not comply with their legislation on substantive grounds; they cannot object on formal grounds, as WIPO has already done that check.

Where a designated office examines design applications, or if their law has provisions for oppositions, then the designated office can request that the refusal period can be twelve months rather than six months.

What if there is a notice of refusal?

WIPO will notify the applicant, or his agent, if there is one.  Responding to the refusal does not involve WIPO; the matter has to be taken up with the designated office concerned.

What are the effects of the International Registration?

Assuming that no notices of refusal have been issued, or else they have been withdrawn, the International Registration has the same effect as if design protection had been applied for directly at the designated offices concerned.

What is the life of an International Registration?

The initial period of an International Registration is five years.  The renewal periods are likewise five years, but only up to the normal duration of design protection in the designations concerned; this varies from designated office to designated office; in most cases it is 25 years, but for some it is 10 or 15 years.  Please see the list of contracting parties at the end of this page for details.

Renewal procedure

Renewals are dealt with through WIPO; it is possible to renew some or all of the designs, and for some or all of the designations.

Recordal of changes

Various changes relating to the designs are recorded through WIPO:

  • changes of name and address of the owner
  • recordal of transfers (which may be for some or all of the designations and/or some or all of the designs)
  • renunciation of all of the designs, in respect of any or all of the designations
  • limitation of the designs, in respect of any or all of the designation

Advantages of using the Hague Agreement

There is a clear saving in being able to apply centrally to cover a number of designated offices, and being able to deal with the recordal of changes and renewals centrally, rather than office by office.

Assuming that objections do not arise, there will also be a saving in local design attorney’s charges.

List of Contracting Parties to the Geneva Act as at
15 July 2015

African Intellectual Property Organization#15T Macedonia25
Albania15 Moldova25
Armenia15 Monaco50N
Azerbaijan15 Mongolia10
Bosnia and Herzegovina25 Montenegro15
Botswana15 Namibia15
Brunei DarussalamT15 Norway25+S
BulgariaE25N Oman15
CroatiaE25T PolandE25N
DenmarkE25*SØ RomaniaE25N
Egypt15 Rwanda15
EstoniaE25T Sao Tome and Principe15
European Union25 Serbia25
FinlandES25* Singapore15N
France∆E25 SloveniaE25T
Georgia15 South Korea20
GermanyE25 SpainE25
Ghana15 Switzerland25
HungaryE25N Syria15T
Iceland25N Tajikistan15
Kyrgyzstan15 Tunisia15
Japan20 Turkey25
LatviaE25 Ukraine15N
Liechtenstein25 United States15N
LithuaniaE25

  Including all Overseas Departments and Territories
E  Member of the European Union
N  No deferment of publication
S  Only six month deferment of publication
T  Only twelve month deferment of publication
10  Maximum duration ten years
15  Maximum duration fifteen years
25  Maximum duration twenty five years
50 Maximum duration fifty years
#  Member countries are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo
+  But only 5 years for items for the repair of a combined product
*  But only 15 years for items for the repair of a combined product
Ø  Not applicable to the Faroe Islands but applicable to Greenland for International Registrations dated 11 January 2011, or later.

This information is simplified and must not be taken as a definitive statement of the law or practice.