What do we know about the Hague Agreement?

Author: Violeta Sutkiene, Associated Partner, Head of Trademark and Design Division at METIDA, Aivija Zilione, Trademark and Design Consultant at METIDA

lemputes 3The Hague System for the International Registration of Industrial Designs has been operational for over 50 years now (the Hague Act was signed in 1960), however this method of design protection has not enjoyed a great deal of popularity so far. The main reason why users who sought to protect the designs of their products did not like this system very much was that the system did not cover many of the key players on the international design market.

The situation shifted in May this year, when two of the major movers and shakers of the world economy – the US and Japan – joined the Hague System. Currently, the Hague System offers its users the opportunity to register up to 100 design samples in more than 64 states and supranational organisations, such as the European Union, the US, Japan, South Korea, and so on. Its plans for the foreseeable future include further geographical expansion to cover Canada, China, Russia, Israel, Mexico, Morocco, and ASEAN countries.

The system is user-friendly indeed – all you have to do is to file an application with the International Office of the World Intellectual Property Organisation (WIPO), specifying the countries for which legal protection of design is sought.

Advantages of the Hague System

Under the Hague System, the applicant can file a single centralised application to any of its member states, resting assured that the date of the application and the level of legal protection in all of the member states will be the same as in the case of national designs that are registered in individual countries. Other international design registration management actions are done and registration maintenance fees are paid centrally.

Lower costs. The amount of registration fees payable for international applications is lower than the total of registration fees in the same set of countries that are payable for national design applications. Registration fees depend on the member states of choice, but in any event, the savings are significant as one does not have to use the services of local representatives in individual countries. If an application makes it through all stages of expertise by the WIPO and local patent bureaus, granting the protection of the registered design will not entail any additional costs.

Wide scope of protection. Protection can apply in a total of 64 states and organisations, and therefore its geographical protection coverage is very wide indeed. Equally important is the fact that an international application may include up to 100 design samples, provided they all fall within the same class of products under the international Locarno classification.

Long life of protection. A registration of an international design can endure for up to 25 years, while the maximum duration of national design registrations is shorter and varies from country to country: for instance, in the US it is 15 years, in Japan, 20.

Submissions of national applications are governed by standards that are more rigid than those which apply to international applications under the Hague System in terms of the format of design images and design descriptions.

Weaknesses of the Hague System

The Hague system offers the opportunity of filing applications on a centralised basis, however there is no generally accepted standard of design across all countries. Some states do not conduct thorough expertise and only impose formal requirements. Yet others have their patent bureaus performing much more exhaustive expertise against a set of stringent requirements. Therefore, when it comes to filing an application, one must scrutinise the legal regulation that applies in every state for which protection of design is sought.

Potential overhead costs. Should a national patent bureau decide to deny protection of a design, the application has to resort to the services of a local agent, because it is local agents alone who are entitled to submit replies to rejections and to proceed with the registration procedure.

Duration of the procedure. The international design registration procedure sometimes runs for a longer period of time than the procedure that applies in individual countries. For instance, when filed directly, a European Union design application is typically registered within several days, while international registrations in the European Union could take as much as a year to complete.

If, for any reason, protection of a design in different countries is to be obtained and enforced on a fast track, one should consider the possibility of combining national registrations and an international registration.

It is also worth mentioning that some of the members of the Hague System (and the US in particular) do not allow postponing the publication of design, which can be critical in certain situations. If any of the countries listed in an international application imposes any restrictions on this possibility, publication cannot be postponed regardless of what the position of the rest of the states is in this matter.

In spite of the weaknesses, one cannot help but appreciate the appeal of the Hague System, especially when the US and Japan have acceded it. Thanks to the efficiency of this method of registration and the economic benefits that it provides, the number of international design applications is likely to grow substantially. Nonetheless, currently the differences in the legal regulation of design registration are rather clear, leading to obstacles in the way of submitting a harmonised application. In order to enjoy the advantages of the international design registration system, one must closely analyze the national practice of every country and consider different options.

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