Member states simplify international design registration system

World Intellectual Property Organization (WIPO) member states have moved to simplify the international design registration system under the Hague Agreement.

There are three different and independent acts under which the Hague Agreement operates - namely:

the London Act of June 2 1934;
the Hague Act of November 28 1960; and
the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (adopted by the diplomatic conference on July 2 1999).

Since each act is an autonomous treaty, some states are party to only one of them, while other members are party to all three. Currently, 54 countries are party to one or more acts. Many of those countries (more than 20) are European. The European Union and the African Intellectual Property Organization are also members. In North America, neither Canada, Mexico nor the United States are contracting parties.

The Hague Agreement provides for a system of international registration which enables owners of industrial designs to file one application (which may contain up to 100 different designs) in one language (either English or French), and with one payment (in Swiss francs).

Within the Hague Agreement, the Geneva Act aims to make it easier to register and gain protection of an industrial design in countries that are member states. The Geneva Act includes:

a modified fee system;
the possibility of deferring publication of a design for up to 30 months; and
the ability to file samples of the design rather than photographs or other graphic reproductions.

The latter features are of particular interest to the textile and fashion industries.

The Hague System guides only international procedure and does not interfere with the substantive contents of a contracting party's domestic legislation. In general terms, the international registration system works as follows:

An international industrial design application is submitted to WIPO.
If the application complies with the formal requirements, it will be recorded in the International Register and published in the International Designs Bulletin. The onus is then on the designated office of each contracting party to conduct a substantive examination of the application to ensure that it meets the requirements of its domestic legislation.
If an office has an objection to the industrial design, WIPO must be notified within six months from the date of publication (under the Geneva Act, a contracting party may extend the refusal period by a further six months). A refusal and any ensuing appeals are under the jurisdiction of the designated office in the corresponding member country.
If no refusal is given within the required timeframe, the international design registration will give protection under the law of the corresponding contracting party.

Protection for international registrations of industrial designs under the Hague Agreement is for a period of five years, with renewal periods every five years, subject to the allowable term (as required by the contracting parties’ respective laws). All renewals are dealt with through WIPO.

It seems that the Hague Agreement is an underused tool. In 2008 only 1,523 registrations were issued, covering a total of 7,920 designs. The primary users of the Hague Agreement appear to be applicants from Benelux, the European Union (starting in 2008), France, Germany and Switzerland.

On September 24 2009, at an extraordinary meeting of the 14 contracting parties to the London Act, a decision was made to freeze the act with effect as of January 1 2010 and to focus on the Geneva Act. This means that as of January 1 2010, no new designations may be made under the London Act. However, any designations under the London Act that were made before that date will not be affected. Necessary amendments to the Common Regulations under the Hague Agreement will follow shortly. The contracting parties also agreed that the next step would be to terminate the London Act, although no timeframe was given for doing so.

The decision to freeze the London Act and focus attention on the Geneva Act suggests that the contracting parties are keen to simplify the process and make it more attractive to owners of industrial designs within the member states.

Robert A MacDonald and Rosario Cartagena, Gowling Lafleur Henderson LLP, Ottawa

Member states simplify international design registration system

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