The increasing importance of international design registrations under the Hague system

20 July 0015

Jana Bogatz

world’s biggest economies, namely the USA and Japan, recently joined the Hague System for the International Registration of Industrial Designs.

International Design Registrations

For designers needing protection of their designs in more than one country particularly where protection is needed outside the EU, an International Design Registration (IR design) may be the perfect tool.

By filing a single application with the WIPO (World Intellectual Property Organization), an applicant can obtain protection for up to 100 designs belonging to the same Locarno class in up to 83 countries, namely in the 64 Hague member states and territories covered by intergovernmental agreements (EU/OHIM1 & OAPI). Unlike the registered Community design, which is a single right enjoying protection throughout the EU, the IR design is comparable to a bundle of national design applications. Therefore, the IR design is treated in the designated territories under the respective national design laws.

IR designs are usually more time and cost efficient where protection in multiple territories is sought, as the filing, renewal or any changes (limitation, assignment, etc) can be done in one step only and in English, French or Spanish language. However, IR designs can only be filed by a person or entity that has its seat or domicile in one of the member states of the Hague system.

The WIPO only verifies that the application meets all formal requirements but does not undertake substantive examination (e.g. for novelty of design) and, therefore, cannot reject an application on substantive grounds. The national or regional offices undertake the substantive examination (if any) and decide whether the design is granted protection in the designated member state.

USA and Japan joining the IR system

The USA and Japan have recently joined the Hague system. Since 13 May 2015, US and Japanese applicants are able to file IR design applications Further, applicants filing IR design applications are now able to designate the SA or Japan for design protection.

Applicants that wish to designate the USA or Japan should be aware of some specific requirements. For example, when designating the USA, the applicant has to additionally submit a Declaration of Inventorship, or, if not possible, a Substitute Statement in Lieu of a Declaration of Inventorship. It is also recommended to add a description of the reproductions filed. Further, the applicant should be aware that no deferment of publication of the design (so called “filing under secrecy”) can be requested in the USA.

For designs created in the USA, the applicant first needs to obtain a license from the United States Patent and Trademark Office (USPTO) before filing a design registration outside of the USA.

Unlike many national offices and OHIM which only check for formalities, the national offices in the USA and Japan carry out a substantive examination of design applications, which might lead to correspondence with the examiner and a longer registration process.

While the registered Community design allows a protection in the EU for up to 25 years (five-year terms of renewal), the maximum duration of design protection in Japan is 20 years and only 15 years in the USA.

Comments

Even though the Community design system is -with more than 80,000 applications per year -still much more popular, the IR design system with about 3,000 applications per year is constantly growing. In 2013, the WIPO counted 27,838 active registrations that contained 116,571 designs.

For many years, the Hague member states only comprised a number of European countries and some African countries, while American and Asian countries were missing altogether. The accession of the EU/OHIM and OAPI in 2008 increased the number of countries, but many countries of economic importance were still missing.

After South Korea joined the Hague system in 2014 and the recent additions of the USA and Japan, the importance of the IR design system will certainly increase. However, other major countries like Australia, Canada, China or Russia are still missing and IP right owners will therefore need to file additional national applications in these countries.

This article is part of DesignWrites for July 2015

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