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.
There are three different acts under which the Hague Agreement operates:
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.
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
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.
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.
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.
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.
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.
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.
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.
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.
Various changes relating to the designs are recorded through WIPO:
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.
|
(OA) African Intellectual Property Organization#15T (LI) Liechtenstein25 |
(MU) Mauritius |
∆ Including all Overseas Departments and Territories
E Member of the European UnionThis information is simplified and must not be taken as a definitive statement of the law or practice.
Our IP specialists work at all stage of the IP life cycle and provide strategic advice about patent, trade mark and registered designs, as well as any IP-related disputes and legal and commercial requirements.
Our peopleRead our blogs to keep up to date with developments in the IP world and what we are up to at Mewburn Ellis.
We have an easily-accessible office in central London, as well as a number of regional offices throughout the UK and an office in Munich, Germany. We’d love to hear from you, so please get in touch.
Get in touch