HAGUE SYSTEM FOR THE INTERNATIONAL PROTECTION OF INDUSTRIAL DESIGNS

Introduction: A simple and effective system of international registration of industrial designs was a pressing need to reduce compliances, formalities, expenses, multiple filings and fees by which applicants could pursue international protection to their designs with minimum hurdles.

The Hague System comprises of the following two acts namely:

i. The Hague Act of 1960 and

ii. The Geneva Act of 1999

Need for the Geneva Act 1999:

The said Act was introduced with the following objectives:

– To incorporate features allowing facilitating entry of states providing for novelty examination

– To further preserve underlying simplicity of the Hague System

– To provide a link and act as a bride between international registration systems by creation provisions to intergovernmental registration systems by creating provision to intergovernmental organisations in becoming party to the Geneva Act 1999.

-The Geneva Act 1999 does not require contracting States to be a party to Paris Convention unlike the preceding 1934 and 1960 Acts. However, every party contracting to the Act is obliged to respect provisions of the Paris Convention. Summationion of the 1960 and 1999 Acts:

– The International Registration of an Industrial Design may be sough with WIPO’s International Bureau

– The said registration may be sought either directly or through the Industrial Property Office of the Contracting Party of Origin.

– The law of the contracting party has to permit or require the route for above mentioned registration. – The 1960 Act is open only to State parties

– The 1999 Act is open to Inter Governmental Organisations as well.

List of Members and Inter Governmental Organizations:

African Intellectual Property Organization OAPI (Please refer member countries in OAPI TREATIES)

Albania, Armenia, Azerbaijan, Belgium, Belize, Benin, Bosnia & Herzegovina, Botswana, Bulgaria, Cote d’Ivoier, Croatia, Democratic Republic of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Gabon, Georgia, Germany, Ghana, Greece, Hungary, Iceland, Italy, Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Luxembourg, Mali, Monaco, Magnolia, Montenegro, Morocco, Namibia, Netherlands, Niger, Norway, Oman, Poland, Republic of Moldova, Romania, Rwanda, Sao Tome and Principe, Senegal, Serbia, Singapore, Slovenia, Spain, Surinam, Switzerland, Syrian Arab Republic, Tajikistan, The Former Yugoslav Republic of Macedonia, Tunisia, Turkey and Ukraine.

The above acts are completely independent of each other, so it is the discretion of a potential contracting party to decide to choose membership to either one or both the acts.

Kindly note, the London Act of 1934 which is prior to the above acts was abolished, hence it is no longer in existence.

The Hague system’s main benefit has been a consolidation of the filing process by replacing serial filing of multiple applications at various national offices with a single application that can be lodged with WIPO.

Benefits of the Hague System:

The Hague System offers the following benefits to its users:

i. Single international application in one language.

ii. Single set of fees in one currency.

iii. No need for several separate national applications in each of the contracting states where protection sought.

iv. No need to keep a watch on deadlines for renewals in each of the contracting states where protection sought.

v. Filing with one office that is WIPO.

Using the Hague System:

The following are entitled to use the Hague system wherein, a contracting party is addressed as ‘The State of Origin’:

i. nationals of the contracting parties to the Hague system

ii. nationals of a member state of an intergovernmental organisation contracting with the Hague system.

iii. natural persons or legal entities having :

– A real and effective industrial or commercial establishment

– A domicile in any one of the contracting states to the Hague system

iv. as per the Geneva Act of 1999, the user may have a habitual residence in a contracting party.

The concept of “domicile” can have different meanings, depending on national legislation. It is for the law of a Contracting Party to determine the criteria for either a natural person or a legal entity to be regarded as domiciled in that Contracting Party. With respect to legal entities, their “domicile” can be considered to be the place of their actual headquarters.

Filing of international applications under the Hague System:

i. Applications for the first time may be filed straightaway with WIPO since pre-registration with national IP offices or home offices is not a pre-requisite. However, if the applicant so chooses, the application may be transmitted to WIPO via the national IP office.

ii. The application may contain upto a maximum of 100 different designs. However, they all must belong to the same class as per the Locarno treaty. In other words, the application must be ‘monoclass’.

iii. The official languages for filing of the application must be either English, French or Spanish.

iv. The application must designate the contracting parties in which applicant wishes to seek protection of the industrial designs.

v. Deferral of the publication of the application may be sought:

– for 12 months under the The Hague Act of 1960 and

– for 30 months under The Geneva Act of 1999

vi. The international application under the Hague system entails the following fees:

– A basic fee

– A publication fee

– A standard or designation fee towards the contracting party where protection is sought.

The standard fee is further split into three tiers indicative of the stages of examination carried out by the IP office of the contracting party.

Examination: Formality Examination by WIPO:

Once WIPO is in receipt of the application, a formality examination is conducted to ensure that the application is in compliance with the prescribed requisites. However, substantive examination regarding novelty of the design is not conducted, hence, rejection of the application on substantive grounds is not allowed.

Substantive Examination by National IP Offices:

Post publication of the application in the International Designs Bulletin on the WIPO website, the national IP offices of the designated contracting states must identify the international registrations in which such offices have been designated.

The national IP offices then proceed to substantively examine the application as per their national legislation to ensure compliance base on which they make decide to accept or refuse the application on the grounds of non-compliance.

Refusal of grant of protection to the application must be notified to the WIPO by the national IP offices within:

– 6 months per the 1960 Act

– 12 months per the 1999 Act

Publication of the application: Post formality examination, if the application is found in compliance with all the prescribed requisites, it is recorded in the International Register and published in the International Designs Bulletin, or deferred as per request.

Remedies against refusal of registration of the application:

In the event application is refused protection, the following steps ensue:

– Applicant may contest the refusal with the IP office of the designated contracting party.

– The appeal against refusal by the applicant is dealt with as per the national laws of the contracting party.

– Applicant has to submit his appeal with the concerned authorities within the prescribed time limit.

– It is to be noted that WIPO is not involved in appeals by the applicant against refusals as it is the prerogative of the national IP offices to either accept or refuse applications as per their national laws.

Procedure upon grant of protection to the application:

In the event application is granted protection, the following steps ensue:

– The national IP office of the designated contracting party has to communicate a notification of refusal within the prescribed time to WIPO.

– In the event the national IP office of the designated contracting party does not communicate such refusal to WIPO, it is deemed that designs are protected.

– Non-communication of refusal of registration results in international registration of those designs and has the same effect as a grant of protection for an industrial design us per the law of such contracting state.

Term of Protection:

Designs are protected in the following manner:

– Initially for a period of five years.

– Renewable for additional periods of five years.

Protection and Renewals are dependent on the national laws of the designated contracting states, so the maximum term of protection would be until such time that the national law allows.

Determination of the Act from amongst the two Acts of 1960 and 1999:

Act applicable to a designated contracting party depends on:

– The act binding the contracting state of the applicant and – The act binding the designated contracting state

– There being a common act between the applicant and the designated contracting state, the act applicable would be the one governing the designated contracting state.

i. For instance, an applicant originating from a contracting state bound by both the 1999 and 1960 acts designates a contracting state bound solely by the 1960 act, such designation would be governed by the single common act which in this instance would be the 1960 act.

ii. In the event where both the applicant and the designated contracting state are bound by both the 1960 and 1999 acts, such designation would be governed by the more recent act which in this instance would be the 1999 acts.

Importance of determining which of the acts from amongst the 1960 act and the 1999 act becomes relevant whilst requesting deferment of publication and the fees payable.

Features of the Geneva Act 1999:

1. Deferment of Publication:

Where the law of a Contracting Party bound by the 1999 Act provides for deferment of publication for a period which is less than the prescribed period (30 months), that Contracting Party must, in a declaration, notify the Director General of WIPO of the allowable period of deferment.

2. No Deferment of Publication:

Where the law of a Contracting Party bound by the 1999 Act does not provide for the deferment of publication, that Contracting Party must, in a declaration, notify the Director.

General of WIPO of that fact.

3. Unity of Design:

Any Contracting Party bound by the 1999 Act and whose law, at the time it becomes party to that Act, requires that designs which are the subject of the same application conform to a requirement of:

unity of design, unity of production or unity of use,

or belong to the same set or composition of items, or that only one independent and distinct design be claimed in a single application, may, in a declaration, notify the Director General of WIPO accordingly.

4. Certain Views of the Design Required

Any Contracting Party, bound by the 1999 Act, which requires certain specified views of the product or products which constitute the industrial design or in relation to which the industrial design is to be used must, in a declaration, so notify the Director General of WIPO, specifying the views that are required and the circumstances in which they are required.

However, no Contracting Party may require more than one view where the industrial design or product is two-dimensional, or more than six views where the product is three-dimensional.

5. Security Clearance:

Any Contracting Party whose law, at the time that it becomes party to the 1999 Act, requires security clearance, may, in a declaration, notify the Director General of WIPO that the period of one month allowed for its Office to transmit an international application to the International Bureau shall be replaced by a period of six months.

6. Contents of the International Application:

Any Contracting Party bound by the 1999 Act whose Office is an Examining Office and whose law, at the time it becomes party to that Act, requires that an application for the grant of protection for an industrial design should contain any of the following elements:

(i) indications concerning the identity of the creator (

ii) a brief description and/or

(iii) a claim

7. Mode and Modalities of communication with WIPO:

Following three modes of communication take place:

i. between the International Bureau and the Office of a Contracting Party;

ii. between the International Bureau and the applicant or holder, or his representative;

iii. between the applicant or holder (or representative) and the Office of a Contracting Party.

Communications should follow the below format:

– Communications addressed by an applicant, holder or an Office to the International Bureau must be in writing and be typed or otherwise printed.

– Handwritten communications are not acceptable.

– The communication must be signed. The signature may be handwritten, printed or stamped, or may be replaced by a seal.

– If the communication is made by electronic means, the signature must be made in the manner determined by the International Bureau or agreed upon between the International Bureau and the Office concerned, as the case may be.

– Communications addressed to the International Bureau may be delivered by hand, sent by mail, by facsimile2 or by electronic means.

8. Calculation Of Time Limits

– The Hague system lays down time limits within which certain communications must be made.

– Normally the date on which the time limit expires is the date on which the communication must be received by the International Bureau.

– If the period within which the communication to be received by the International Bureau expires on the day on which the International Bureau is not open to the public, it will expire on the next subsequent day on which the Bureau is open.

– Where a communication is not met within the time limit or is unduly delayed or lost because of an irregularity in a postal or delivery service, this may be excused, provided due care has been exercised by the sender and the communication was dispatched in good time.

9. Representation Before The International Bureau:

i. An international application may be filed with the International Bureau directly by the applicant.

ii. If he so wishes, the applicant may appoint a representative to act on his behalf before the International Bureau.

iii. The provisions of the Hague system relate only to the representation before the International Bureau.

iv. Appointment of a representative before the Office of a Contracting Party falls outside the scope of the Hague system and is exclusively a matter for the consideration of the Contracting Party concerned.

10 Priority:

Priority of an earlier filing may be claimed under Article 4 of the Paris Convention. Priority may be claimed on the basis of a first filing made in one of the States party to the Paris Convention or any member of the World Trade Organization.

Conversely, since an international application for registration of industrial designs may be a first application under the Hague system, it may itself also serve as a basis for claiming priority with regard to a subsequent national or regional application.

11. Irregularities in the International Application

If it is found by WIPO that the application is not in compliance with all the requirements, the applicant is notified to carry out the requirements within a stipulated period of time, else, the application is deemed abandoned and fees paid towards the application refunded post deduction of the basic fee. Irregularities:

Following irregularities in the application would entail postponement of grant of filing date:

(a) The international application not being in one of the prescribed languages; (b) Any or some of the following elements missing from the international application:

(i) an express or implicit indication as to which of the acts the international registration is sought under, the 1999 Act or the 1960 Act;

(ii) indications allowing the identity of the applicant to be established are found missing; Refusal: Grounds for Refusal

– Each designated Contracting Party has the right to refuse, in its territory, the grant of protection to an international registration.

– Such refusal could be total or partial, in the sense that it may apply to all the designs which are the subject of the international registration or to some only of them.

– However, protection may not be refused on the grounds that the international registration does not satisfy formal requirements, since such requirements are to be considered by each Contracting Party as having already been satisfied following the examination carried out by the International Bureau.

Effects Of The International Registration:

Effects of the International Registration in Respect of Contracting Parties Designated Under the 1999 Act

The 1999 Act recognises of, successively, two sets of effects to an international registration. Such effects, whose recognition by each Contracting Party is a minimum (“at least”) condition, commence on the date of the international registration and are as under:

i. The international registration has at least the same effect in each designated Contracting Party as a regularly-filed application under the law of that Contracting Party.

ii. One of the consequences is that any Contracting Party that affords provisional protection to published national or regional applications must also afford that type of protection to published international registrations in which it is designated.

Effects of the International Registration in Respect of Contracting Parties Designated Under the 1960 Act.

i. If no refusal is notified within the prescribed time limit of six months by a Contracting Party designated under the 1960 Act, the international registration becomes effective in that Contracting Party as from the date of the international registration.

However, in a Contracting Party having a novelty examination, the international registration becomes effective from the expiry of the refusal period unless the domestic law provides for an earlier date for registrations made with its national Office.

ii. if, under the provisions of the domestic law of a Contracting State having a novelty examination, protection commences at a date later than that of the international registration, the term of protection must be computed from the date at which protection commences in that State.

The fact that the international registration is not renewed or is renewed only once shall in no way affect the terms of protection thus defined.