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US & Japan join the Hague system

25th Feb 2015

It was announced on 13 February 2015 that the US and Japan are to join the Hague system for the international registration of industrial designs. Both countries have deposited instruments of ratification to the Geneva Act of the Hague Agreement, and the agreement will come into force for these countries on 13 May 2015.

International Registration: The Basics

The Hague system allows qualifying applicants to file a single application for a registered design at the International Bureau of the World Intellectual Property Organization (WIPO). The International Bureau then transmits the application to the intellectual property offices of the territories designated in the application. The effect is that the design is registered at each designated national (or regional) office unless protection is refused by that office on the basis of domestic law. Some offices carry out substantive examination of the design application to ensure it complies with domestic requirements, and both Japan and the US will do this when the agreement is in force.

As of January 2015, there are 47 contracting parties to the Geneva Act, including two intergovernmental organisations: the African Intellectual Property Organization (OAPI) and the European Union. Designation of the latter became possible in 2008.

Compared to the “Paris route”, whereby separate design applications are filed at the national office of each territory in which protection is required by claiming priority (under the Paris Convention) from an initial application, the “Hague route” offers greater simplicity for the applicant. This is because renewals and modifications of the registration are handled centrally (at WIPO) rather than at the intellectual property office of each territory. One can also avoid the extra expense associated with translations (the international application only needs to be filed in one of English, French, or Spanish) and only one set of fees are payable.

The international registration lasts for five years initially, and is renewable in five year blocks up to a maximum of 25 years (although the laws of some contracting parties may limit this term). It is also possible to file an international registration claiming priority from an earlier-filed national (or regional) registration, or conversely to use the international registration as a basis for claiming priority. Up to 100 designs can be filed in the same international application, provided they are in the same Locarno classification.

Increasing Popularity Of The Hague System?

Despite the advantages of a centralised system, the number of international design applications seems to be lagging significantly behind applications for Registered Community Designs (the EU-wide registered design right), and applications for registered designs in the US and Japan. The table below illustrates this with the number of applications made for registered designs in 2013.

Numbers of registered design applications in 2013

Registered community design applications [1] 23,194
US design patent applications [2] 36,034
Japanese design registration applications [3] 31,125
Hague system applications [4] 13,172

Given the success of the international application system for patents (the Patent Cooperation Treaty), the low uptake of the international application system for industrial designs may be surprising. It is likely, in part, to be due to the limited number of territories that are currently party to one of the Hague agreements, and is also because use of the system is only open to qualifying applicants. This includes applicants who are nationals of, or who have a domicile or a real and effective industrial or commercial establishment in, the territory of a contracting party. For the Geneva Act only, an applicant having their habitual residence in the territory of a contracting party also qualifies.

It is to be expected that the entry of the US and Japan to the Hague system will significantly increase the number of Hague applications, particularly since some 12.9% of all design applications worldwide are filed by either US or Japanese applicants [5].

The Future

Several more of the world’s major economies are also gearing up to join the Hague agreement in due course, including Canada [6] and China [7]. The UK is also expected to join the agreement following the enactment of the IP Act 2014, although this will be viewed as less significant given that the EU is already a member.

As well as allowing US applicants to qualify for use of the Hague system, the date upon which the agreement becomes effective in the US also signals an increase in the term of protection for US design patents filed on or after 13 May 2015, from 14 years to 15 years. Therefore careful consideration will need to be given as to whether it is worth delaying a potential US design patent filing until this date, in order to enjoy an extra year of protection from the registered right.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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