International protection of designs a step nearer - or is it?

By becoming the eleventh country to join the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, Spain has enabled the act to come into force on December 23 2003. The 10 other countries that have ratified the Geneva Act to date are Estonia, Georgia, Iceland, Kyrgyzstan, Liechtenstein, Republic of Moldova, Romania, Slovenia, Switzerland and Ukraine. The act will introduce important changes to the Hague Agreement.

The Hague system currently only covers half of Europe and a handful of countries outside (North but not South Korea for example). This is mainly because it is based on a deposit system and thus excludes examination systems such as those of Japan, Scandinavia, the United Kingdom and the Commonwealth, and the United States.

However, the Geneva Act will do for design protection what the Madrid Protocol did for trademarks - it will enable rights holders and practitioners in signatory countries to search and examine international designs, and to raise objections against the registration of a particular design. This will enable countries that examine design applications prior to registration to join the Hague system. The act also provides special provisions for designs registered through regional offices (such as Community designs registered at the Office for Harmonization in the Internal Market).

The Geneva Act is key to the success of the Hague system, which requires Japan and the United States to join if it is to become of significance. The current system receives about 4,000 applications a year. The numbers have climbed slowly but steadily, doubling over the past two decades. However, there are signs that the Community design system launched in April is attracting business away from the Hague system, with German applicants in particular - the biggest users of the Hague system - switching to the Community route. In view of the high overlap of territorial coverage, the Geneva Act may therefore 'make or break' the Hague Agreement - it must expand, or face being largely replaced by the Community system.

However, it is not certain that the system will succeed, even if Japan, the United States and other significant examining countries join. This is for the following reasons:

• A link between the Hague and Community design systems would take a long time to put into place.
  
  
• The Hague route may be just as complex as filing a set of foreign applications. The formal requirements of the Hague system are set higher, and examining countries can to some extent impose their national idiosyncrasies, so that it may be necessary to prepare applications to meet all the cumulative requirements of all the designated offices - something that is beyond the ability of most applicants.
  
  
• The cost of filing through the Hague system will be hardly different from that of filing in each individual country. This is because examining offices and regional offices may charge designation fees equivalent to their own national fees (with a deduction for the amount saved by the international processing - only likely to be a small saving). Where objections to an international registration are raised at a national level, it may also be necessary to appoint a local agent. There is also the risk that the entire application will be refused as a result of a refusal in one jurisdiction.
  
  
• Because fees are reduced where multiple designs are filed in a single application, the fee structure for international designs (like that for Community designs) favours large companies, which generate more designs than small and medium-sized enterprises in a given time. Thus, big players may find that the Hague system suits them well (if enough states join), but national registrations are likely to remain the system of choice for smaller enterprises for some years to come.

David Musker, RGC Jenkins & Co, London