International registration of industrial designs: the features of the Hague System

Every year, an increasing number of applicants turn to the Hague industrial design registration system: last year alone, about 25,000 applications were submitted to the WIPO IB. In this article we will figure out why it is so attractive.

What is the Hague System?

The Hague System for the International Registration of Industrial Designs is a single centralized system for acquiring and maintaining rights to an industrial design by filing one international application in several declared countries: thus, the system makes it possible to register up to 100 industrial designs at once in 96 countries.

The Hague System is based on the Hague Agreement Concerning the International Registration of Industrial Designs, which consists of two international treaties: the Hague Act of November 28, 1960 (“1960 Act”) and the Geneva Act of July 2, 1999 (“1999 Act”). The latter was ratified by the Russian Federation in 2017.

The overall management of the Hague System is carried out by the International Bureau of the World Intellectual Property Organization (WIPO IB).

Among the main advantages of the Hague system are the possibility of filing one application instead of several national applications, which entails significant savings in time and finances for applicants, filing an application in one language, paying fees in a single currency, simplicity and transparency of the procedure, and further easy management of international registration.

By the way, under the Hague system, protection of an industrial design can be sought for the first time by filing an international application, that is, the presence of a basic national application or document of protection is not required (unlike, for example, the Madrid System for the International Registration of Trademarks).

Who Can File an Application?

The right to file an international application under the Hague system arises for a person who:

• is a citizen of a state party to the Hague Agreement or a member state of an intergovernmental organization that is a party to the Hague Agreement (hereinafter referred to as the contracting parties)
• has permanent or temporary residence in a contracting party; or
• is the owner of an operating industrial enterprise in the contracting party.

How to File an Application?

The filing of an international application for registration of industrial designs can be carried out at the choice of the applicant in the following ways:

• Directly to the WIPO IB, including

- in electronic form using the eHague service

- in paper form on the official application form DM/1, which can be downloaded from the WIPO IB website;

• By submitting a paper application on the official application form to the national office of the contracting party, which then forwards the application to the WIPO IB.

It should be noted that Russian applicants must take into account that in accordance with the requirements of Government Decree No. 629 of May 25, 2017, international applications for registration of industrial designs provide for a check for the presence of information constituting a state secret. This verification is carried out by Rospatent within 6 months when submitting an application using any of the above methods.

In this case, the date of filing of the international application is considered to be the date of its receipt by Rospatent.

What Fees are Payable When Filing An Application?

For the purpose of filing an international application for registration of industrial designs, three types of fees are paid, namely:

• Basic fee
• Publication fee
• Standard or individual duty for each country specified in the application.

Application fees can be calculated in advance using the calculator on the WIPO IB website, and will also be calculated automatically when you submit your application through the eHague service. All fees under the Hague system are paid in Swiss francs (CHF).

When filing an application, it is most important to pay the basic fee, since failure to pay the fee will prevent the WIPO IB from proceeding with the formal examination of the application. In this case, it issues a notice in which it gives a 2-month period for payment of the fee, if missed, it considers that the applicant has abandoned the application.

What are the Application Requirements?

The content of the application can be divided into three categories:

1. Mandatory elements (included in the application in accordance with the requirements of the WIPO IB);
2. Additional mandatory elements (included if the countries in respect of which the application is submitted have made a corresponding declaration);
3. Optional (included at the request of the applicant, for example, appointing a representative, requesting priority, etc.).

Regarding the second point, we note that countries can make certain statements indicating additional requirements for applications in order to harmonize national legislation and the Hague system. For example, a number of countries, including the Russian Federation, impose requirements for the unity of industrial designs, etc.

Applicants who want to obtain protection in these countries should be aware of these requirements. On the paper form, for convenience, individual columns are marked “if applicable” and “optional.” At the same time, in the eHague service , the necessary columns when specifying the list of countries when filling out the electronic form will appear automatically.

In general, the international application contains the following basic information:

• Information about the applicant
• Right to submit an application (indication of affiliation with a contracting party)
• Name of the industrial design (usually the generic concept is indicated)
• Class and subclass of the Locarno classification (preferably, but not required)
• Description (if applicable). However, if the description contains more than 100 words, for each word over 100 an additional fee of 2 Swiss francs is charged
• Author information (if applicable). Some countries only require an indication of the identity of the author, but, for example, the USA additionally requires an oath/statement of the author.
• A claim (if applicable) is specific language specified by some countries as mandatory (for example, the United States and Vietnam).
• Claiming priority (if the applicant wishes, priority can be corrected within 6 months from the date of filing the early application). At the same time, the WIPO IB does not require a priority document; this is done by the office conducting the substantive examination.
• Images of the industrial design (photos, drawings or other graphic images) of all industrial designs specified in the application. As we wrote above, up to 100 different designs can be included in one international application, if they all belong to the same class of the Locarno classification. Multiple images may be submitted for one sample, but there is no set number. All images must be of high quality.
• Identification of the countries in which legal protection is sought. However, after submitting your application, you will not be able to add countries.
• Application language: English, French or Spanish

What is the Procedure for Reviewing an Application?

After being received by the WIPO IB, the application goes through a stage of formal examination to determine whether it meets the requirements for its execution. However, at this stage the industrial design will not be checked for patentability. The period for consideration of the application by the WIPO IB is 6-8 weeks.

If the application is completed correctly, information about it is entered into the International Register, and the applicant receives a certificate of international registration.

As a rule, after 12 months from the date of international registration (at the request of the applicant, this period can be reduced or increased), information about it is published in the Bulletin of International Industrial Designs. Then the international application is sent to the national offices of the countries indicated in it, where the declared industrial design undergoes substantive examination.

If, within 6 months from the date of publication, the WIPO IB has not received a preliminary refusal of the application or information on the extension of the period for conducting a substantive examination, then legal protection is considered granted. However, it is not mandatory for the national office to inform the applicant about a positive decision.

Duration of Granting Legal Protection

Legal protection under the Hague System is granted by default for five years, renewable for one additional period, i.e. a minimum period of 10 years (for countries that have ratified the 1960 Act), or two additional periods of five years each, i.e. a minimum period – 15 years (for countries that ratified the 1999 Act). The maximum period of protection in each country is provided for by national legislation.

International Registration Management

International registrations under the Hague System are easy to manage. Thus, changes may be made to it, such as changing the name/address of the owner and/or representative; refusal of international registration, restriction of international registration, assignment of international registration. However, making such changes is not yet available through the eHague interface, only by filling out and uploading official forms to the platform.

Regarding the renewal of an international registration, this is possible six months before the expiration of each five-year period, of which the applicant is promptly notified by the WIPO IB. eHague has an interface that allows you to extend the validity of international registrations. In this case, the extension may be carried out in whole or in part - in relation to some of the specified countries and/or for some of the industrial designs that are the subject of an international registration. The corresponding fees are calculated automatically.

Sources:

1. Guide to the Hague System. International registration of industrial designs under the Hague Agreement
2. The Hague System of International Registration of Industrial Designs (Geneva Act)