Part E: Hague Agreement for the International Registration of Industrial Designs
Includes chapters on applying for International registrations, design representation, deferment of publication, examination, refusals and renewals.
14.01
On 13 June 2018 the United Kingdom (UK) became a member to the Hague Agreement for the International Registration of Industrial Designs, allowing the UK to be a designated state.
The system provides an international route for registering up to 100 designs through a single application. When using this route to file, the applicant will be asked to ‘designate’ (choose) which of the countries or territories (known as ‘contracting parties’) they wish their designs to be protected in. The UK will become the 68th contracting party and applicants can choose to designate as many contracting parties as they so wish.
The Hague System of international registration of industrial designs is administered by the IB of the World Intellectual Property Organisation (WIPO) which maintains the International Register and publishes the International Designs Bulletin.
Those 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.
Further information on how to make an application via the Hague System is available on WIPO’s website Hague guide for users.
14.02
As the UK Intellectual Property Office (IPO) is not a receiving office for Hague applications, applicants will need to file an application directly with the IB. 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:
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one reproduction of a design, and
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designate at least one contracting party.
A single application can contain up to 100 designs, provided they are all in the 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.
It should be noted that unlike a UK design application which is registered and then published in the UK, an international application is registered and published following the formalities examination carried out by the IB. The design is not protected in the UK until the UK designs examiner conducts a substantive examination in line with it’s own national law
14.03
The criteria for representing your design may differ in each territory designated. To assist applicants WIPO has produced guidance on reproductions to ensure that representations filed comply with the technical requirements under the Hague system within certain territories.
It should be noted, in line with Rule 9(4) of the Common Regulations, that applications which designated the UK may be refused, if one (or some) of the reproductions are in a different form or, if only one (or some) of the representations are in colour, the contents of the claimed design shown in all the reproductions, such as colour, pattern, etc, will be considered as inconsistent with each other. In such cases a refusal will be issued and the applicant will be required to limit the application to only one form. Please note that Section 3B of the RDA has been disapplied for the purposes of applications filed under the Hague system, therefore it is not possible to divide an international application if there are inconsistencies between the reproductions.
For example, a refusal may be issued where:
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at least one of the reproductions of an industrial design is a photograph. The remaining ones are line drawings
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at least one of the reproductions of an industrial design is a line drawing. The remaining ones are computer graphic representations
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at least one of the representations of an industrial design is in colour. The remaining ones are in black and white
14.04
Although the Hague system for the registration of designs allows a 30 months deferment period, which applicants may want to use to delay publication of their design, it should be noted that the UK only allows a deferment for 12 months. This means that any application which designates the UK will be published at the earlier deferment time allowed (12 months). This timescale cannot be extended and will be 12 months from the date of filing the application at WIPO, and will not be backdated to reflect an earlier priority claim, as maybe the case with applications that do not designate the UK.
14.05
In respect of International Applications only, the UK IPO will not carry out an examination on any formality requirements as this initial examination is carried out by the IB. It is therefore important that any representations filed clearly show the design to be protected.
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 on WIPO’s website and is published every Friday. Further details can also be viewed via Hague Express on WIPO’s website.
14.06
Once the International application has been ‘registered’ (in respect of the formalities requirement) and published, the UK IPO, if designated, will carry out a substantive examination in respect of UK national law. This includes examination on four substantive grounds:
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that the design complies with the definition of a design;
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technical function;
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public policy and morality
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protected emblems etc.
Further information can be found in Chapter 2 of this guide.
14.07
Once a UK designation has been examined the UK IPO will, if it is issuing a refusal on a substantive ground, notify the IB who will issue the examination report to the applicant. A refusal of protection in the UK needs to be notified to the IB within 6 months (Rule 18 1(b) of the Common Regulations).
If protection is granted in the UK, in line with UK law, the design can be protected up to a maximum period of 25 years..
14.08
In the event of a refusal, following examination by the examiner, the applicant will be informed in writing (via the Examination Report). The report will provide details of the relevant section(s) of the RDA and/or Rules which apply and allow a period of time for the applicant to respond. If the examiner is minded to maintain the object the applicant of the international application has the same routes to appeal that they would have had if they had filed a national UK application.
14.09
Once a design has been protected in the UK it is important for the registered proprietor of that design to notify the IB of any changes. The following changes must be recorded in the International Register:
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a change in the name or address of the holder or their representative;
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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);
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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;
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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.
14.10
Requests must be made to the IB on the relevant forms and must be accompanied by the prescribed fees.
14.11
The IB will issue a reminder to right holders, and any representatives if applicable, six months before the expiry of each of the five-year terms.
There is a six month grace period following the date of renewal that allows holders to make a late renewal on payment of the relevant fees. Although there is no official form for the renewal of an international registration, there is an unofficial form DM/4 which provides for the necessary information.
Any further questions on the Hague system can be referred WIPO direct at:
Hague Registry Brands & Designs Sector
WIPO
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)