Guidance

Hague agreement for the International registration of industrial designs

Published 25 May 2018

On 13 June 2018 the UK will become a member to the Hague Agreement for the International Registration of Industrial Designs, allowing the UK to be a designated state.

The Hague System provides a practical business solution for registering up to 100 designs in over 68 contracting parties, which can provide protection in up to 81 countries. This allows for a single international application filed with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) rather than a whole series of applications which would otherwise have to be filed with different national offices

The Hague System of international registration of industrial designs is administered by the IB which maintains the International Register and publishes the International Designs Bulletin.

Businesses using the Hague system can designate the key markets where they trade to select appropriate coverage for their needs. The UK will be the 68th member of the Hague Agreement. Other members include the USA, Russia, Japan, South Korea and the EU.

There are two Acts of the Hague Agreement currently in operation:

• The Geneva (1999) Act and

• The Hague (1960) Act

An international application may be governed by the 1999 Act, the 1960 Act or both, depending on the Contracting Party with which the application originates from. UK applications would be governed by the 1999 Act.

This guidance provides a brief overview for UK designations to Hague. Further detailed guidance on how to make an application to the Hague System is available.

Benefits of Hague

Design intensive UK business generate in excess of 11 per cent of our GDP ^{[footnote 1]} with a total investment in intangible assets protected by design rights estimated at more than £14 billion.^{[footnote 2]} The UK membership to the Hague registration system will enable UK designers, particularly SMEs, to take full advantage of the flexibility and greater choice when registering their designs internationally. Other advantages include:

• save money on design registrations

It is one application to manage that is paid in one currency and completed in one language. Other savings can be realised in professional, notary and translation fees

• protecting Intellectual Property more efficiently The system simplifies the management of applications, as all administration is handled by one agency, the International Bureau

• encourage non-UK owners of designs to register their rights in the UK UK membership should encourage non-UK owners of designs to register their rights in the UK, thereby encouraging the manufacture, distribution or licensing of their designs in the UK

Examples of designs protected through the Hague system are available.

Registration of designs

Who can apply to the Hague system?

A natural person or legal entity having a connection - through establishment, domicile, nationality or, under the 1999 Act, habitual residence - with a Contracting Party to either of the two Acts. UK applications would be governed by the 1999 Act.

How do I apply?

Application need to be filed directly with the IB, the Intellectual Property Office (IPO) will not be receiving applications directly. The application form is on the WIPO website in both digital and hard copy versions. You can file in either English, French or Spanish. An application must contain at least

• one reproduction of a design, and

• designate at least one contracting party

A single application can contain up to 100 designs, provided they are all in same Locarno class.

The filing of an international application does not require a base filing from any prior national application or registration and you can file for the first time through the Hague System.

Reproductions of a design

It is worth noting that the criteria for reproductions of your design may differ in each territory. To assist applicants WIPO have produced guidance on providing reproductions to ensure that images comply with the technical requirements under the Hague system within certain territories. If you are designating the UK it is also advisable to consult with the UK guidance on reproductions under Chapter 11 of the UK Registered Designs Examination Practice guide.

Fee structure

An international application is subject to the payment of three types of fees: a basic fee, a publication fee and, in respect of each Contracting Party where protection is sought, either a standard or an individual designation fee. The amounts of the fees payable are set out in the Schedule of Fees.

The UK has set its fees at the level 1 standard fee. This means that to designate the UK it will be 42 CHF (£30) for the first design, and 2 CHF (£1) for each additional design in same Locarno class. All payments to the IB must be made in Swiss Francs.

Examination of application

The IB carries out a formalities check it does not examine the application. Once the application is published, the Office of each designated Contracting Party can carry out a substantive examination, if provided for by its own legislation.

All applications which designate the UK, will be examined by the UK IPO we will register or refuse the application based on our national legislation.

Following examination a Contracting party may notify the IB of a refusal of protection for its territory. A refusal of protection, needs to be notified within 6 or 12 months. Countries acceding to the 1999 Geneva Act, such as the UK, can extend this to 12 months in the following cases:

• the Office is an “Examining Office”, or

• the national law provides for a procedure for opposition to the registration of an industrial design

Publication

An international application that complies with the formalities check is recorded in the International Register and, published in the International Designs Bulletin. This is available via Hague Express on WIPO’s website.

The filing/relevant date

This will be the date on which the IB receives the international application, subject to any formality type irregularities.

Deferment of publication

Hague allows for a maximum of 30 months for deferment of publication from the filing date or, where priority is claimed, from the priority date of the application concerned. UK law provides for 12 months from the filing date but does not backdate to reflect an earlier priority claim. Under Hague, deferment of publication will be the shortest period for designated countries. So if the UK is designated publication will need to be made in 12 months from the filing date.

The Hague system will inform applicants of the deferment dates provided for the territories selected.

What happens if my application is refused in a territory?

A refusal in a territory will only affect the protection for that territory and not the whole application. If the application is granted in other designated territories these will still stand.

In the event of a refusal, the holder has the same remedies as they would have if they had filed the application directly with the national Office concerned. If you want to contest a refusal you would need to follow the procedure in that area and submit an appeal to the competent authority of the contracting parties in accordance with that Contracting Party’s own legislation. The IB is not involved in this procedure.

Information including contact details on members of WIPO is available on their website.

Duration of protection

International registrations are valid for an initial period of five years. Contracting Parties designated under the 1999 Act can be renewed for two additional five-year periods for at least 15 years counted from the date of international registration. If a contracting party allows a longer period you can continue to renew an application for that territory up to the maximum time period allowed. The UK allows for a maximum period of 25 years.

Contracting Parties designated under the 1960 Act are valid for an initial period of five years and may be renewed for an additional period of five years for at least 10 years counted from the date of international registration. Again if a contracting party allows a longer period you can renew an application for that territory.

Information on the maximum duration of protection for contracting parties is supplied to holders in the unofficial notices of expiry which are sent by the IB six months before the expiration of each five-year term.

Representation before the International Bureau

An international application may be filed with the IB directly by the applicant or they may appoint a representative to act on their behalf. There are not requirements for a representative to have a professional qualification, nationality or domicile.

Only one representative may be appointed for an international application or registration. If the appointment indicates more than one representative in respect of the same application or registration, only the one indicated first is considered to have been appointed. Where a partnership or firm of attorneys or patent or trademark agents has been indicated, this is regarded as a single representative.

The appointment of a representative before the Office of a Contracting Party (in the event, for example, that an appeal is lodged against a refusal of protection) are a matter for the law and practice of the Contracting Party concerned. Details on the UK dispute resolution process is available on our website.

Post-registration

Changes in the International Register

The following changes must be recorded in the International Register:

• a change in the name or address of the holder or his representative;

• a change in the ownership of an international registration (in respect of all or only some of the designated Contracting Parties and in respect of all or some of the designs included in the registration);

• a renunciation of all the designs that are the subject of the international registration, in respect of any or all of the designated Contracting Parties;

• a limitation of some of the industrial designs that are the subject of the international registration, in respect of any or all of the designated Contracting Parties.

Requests must be made to the IB on the relevant forms and must be accompanied by the prescribed fees.

Renewals

Procedure for renewal

Six months before the expiry of each five-year term, the IB sends to the holder and the representative, if any, a notice indicating the date of expiry of the international registration, along with the maximum term of protection for contracting parties in the application.

It is worth noting that if the holder (or representative) does not receive this notice, it does not constitute an excuse for failure to comply with any time limit for payment of the renewal fees due.

There is a six month grace period following the date of renewal that allows holders to make a renewal. There is a surcharge applicable to this.

There is no official form for the renewal of an international registration. However, there is an unofficial form DM/4 which provides for the necessary information.

An electronic renewal (E-renewal) interface is available for total or partial renewal of international registrations, this automatically calculates the fee.

Fees for renewal

The fees due for the renewal of an international registration must be paid directly to the IB. Those fees consist of:

• a basic fee;

• an individual designation fee (if a Contracting Party has one),

• a standard designation fee in respect of each Contracting Party for which the international registration is to be renewed

Recording of the renewal; certificate and publication

The IB records the renewal in the International Register, with the date on which it was due, even if the fees required were paid within the grace period of six months after the due date. The relevant data concerning the renewal is published in the Bulletin.

Where the international registration has been renewed, the IB sends a certificate of renewal to the holder.

For any further questions on the Hague system contact:

WIPO
Hague Registry
Brands & Designs Sector
World Intellectual Property Organization
34, Chemin des Colombettes
1211 Geneva 20
Switzerland

Tel: +41 (0) 22 338 7575
Fax: +41 (0) 22 740 1429
Opening hours: 09:00 - 18:00 (CET)

UK Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

Email - information@ipo.gov.uk
Telephone: 0300 300 2000

1. UK Intangible Investment and Growth: New measures of UK investment in knowledge assets and intellectual property rights
   
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2. IPO calculation based on an ONS estimate of UK GDP, and estimated investment taken from P. Goodridge, J. Haskel and G. Wallis (2016) ↩