Registered Designs: The Hague Agreement Explained
This article was included in our Winter 2009/10 edition of Inside IP.
The Hague Agreement is a ‘closed’ system meaning that it is not open for anyone to use. To be eligible, an applicant must be a resident, domiciled or have a real and effective commercial establishment in a contracting state. Thus the system is not currently available to companies based only in the USA or Japan, for instance.
Where can protection be obtained?
A list of current members can be found on WIPO’s website at this link http://www.wipo.int/treaties/en/documents/pdf/hague.pdf
Any or all of the member states can be designated in the international application and the official fees payable are calculated accordingly. The Hague Agreement comprises a number of different Acts, and one proviso is that every state that is to be designated in the application must also be a signatory to the same Act as the state in which the applicant is a resident/is domiciled/has a commercial establishment. Although there are currently 56 signatories to the Hague Agreement, only 35 are signatories to the ‘Geneva Act’, which is the only Act to which the European Community is a signatory. As such, applicants entitled to use the Hague Agreement by virtue of European residency or commercial establishment can only designate these particular 35 states in their international registered design application.
The European Community can be selected as a single designation which effectively comprises selection of a Registered Community Design, thereby providing design protection in all 27 states of the European Community with the single designation.
What is the procedure after filing the application?
Once WIPO receives the application, it is examined for formality requirements only (it is not examined for substantive issues such as novelty). Once past examination, the application is registered and published by WIPO.
The intellectual property authority in each designated state then checks that the application complies with its national design legislation and, if it does, the international registration has the same effect as a normal design registration in that state.
If a designated intellectual property authority determines that the international registration does not meet the requirements of its national legislation, it has 6 months from publication to notify WIPO of refusal of protection and any remedial action which may be available is as provided by that state’s national law.
How long is the duration of protection?
The international registration is effected for an initial period of 5 years. For all states, this can be renewed for two further 5 year periods to a total of 15 years. Where national laws permit a longer period of registered design protection, the international registration may be renewed in further 5 year blocks until the maximum duration of protection in that state is reached.Renewal fees are paid directly to WIPO and may be paid in respect of all or only some of the designated states. Furthermore, up to 100 separate designs may be included in a single international registration, and renewal fees are payable in respect of all or only some of those registered designs.