6. Hague Agreement on Industrial Designs

Patents / US and Foreign Patent Practice / EU Design Regulation / Hague Agreement

Before closing, we should note one further international development which is likely to have increasing significance in the next few years, although its relationship to the Community Design Right is still unresolved.

The Hague Agreement has focused on procedural matters rather than the substantive law issues discussed for the most part above. The Hague Agreement on International Deposit of Designs has provided a means for nationals of member states to secure protection in several countries by means of a single application since 1925. Under the Agreement, nationals of member countries can file a single design application with the WIPO in Geneva and obtain design protection in all other member countries. However, many major countries, including the United States, the United Kingdom and Japan, have up to now refrained from membership mainly for fear that the grant of unexamined rights by a foreign body might have an adverse effect on their own domestic industries.

A Diplomatic Conference in June and July 1999 agreed to a number of amendments to the Hague Agreement on the Protection of Industrial Designs which have the objective of encouraging countries that are not at present parties to the Agreement to join it. The amendments seek to reduce such fears and include accommodation of any country that wishes to check whether an international design application complies with its national laws. The initial signatories to the revised treaty were Algeria, Belgium, Bulgaria, Chad, Croatia, Cuba, Denmark, Estonia, France, Greece, Hungary, Italy, Latvia, Moldova, the Netherlands, Portugal, Romania, Russia, Slovenia, Spain, Switzerland, the United Kingdom, and the United States. The new act will come into effect after it has been ratified by six of the signatory nations.

The overall objective of the treaty is to provide a way in which a single design application can give rights to protection for that design in several countries while preserving the rights of those countries to exclude from protection any designs that do not qualify for protection under their own laws. Therefore international design applications must designate the countries in which the applicant wishes to secure protection. The designated countries can refuse to give effect to an application in part or entirely if the application does not meet the requirements for protection under their national laws. The Treaty does not lay down any particular standards for registrability, leaving this to national laws. Once registered the International Registration will have the same effect as a national design registration in those designated countries that have not refused to give effect to the application.

Major features of the revised treaty and the regulations accompanying it are summarized below.

1) International design protection is confined to applicants who are nationals of a contracting country, domiciled in a contracting country or have an effective industrial or commercial establishment in a contracting country.

2) An international design application may be filed either at the applicant's national office or directly with the International Bureau at W.I.P.O. The application can be filed in English or French. Applications filed in national offices will be forwarded to the International Bureau for further processing. Applications will normally have to include photographs or "other graphic representations" of the design. However, in cases where the design is two-dimensional and the applicant wishes to defer publication as discussed below, specimens of the design may be supplied instead. It is understood that this provision is of special interest to the textile industry.

3) The International Bureau will carry out a formalities examination following which, if the application complies with the requirements, it will proceed to registration. Publication will follow registration, normally six months after the international registration but earlier if the applicant so requests. However, where any of the designated countries provides for deferment of publication, provision is made that in some circumstances publication may be delayed up to 30 months from the earlier of the filing date or the priority date of the application if the applicant so requests.

4) Once the registration has been published, the International Bureau will send a copy of the publication to each of the designated countries and such countries will normally have six months within which to advise the International Bureau that the registration does not meet the requirements of its national law and so will have no effect in that country. However, countries that examine design applications for novelty or where oppositions are possible have one year from the date on which they are advised of the international registration within which to advise the International Bureau that the international registration will not have effect in them.

5) The treaty provides that multiple designs may be included in the same application, although the regulations provide that all products to which such designs relate must be in the same class under the Locarno classification. However, national offices are allowed to retain the unity requirements that exist at the time the treaty comes into effect. If an international application does not comply with such requirements, the country can require that the registration insofar as it relates to it is divided so as to comply with national law.

6) Invalidation proceedings may be brought against the registration on the ground that it does not qualify for protection against the national law of any of the designated countries and, if this is found by the competent authorities in such a country to be the case, such authority may hold that the registration ceases to have effect in its country.

7) The initial term will be 5 years from the registration date and, for all countries, two additional 5-year renewal periods are provided. Renewal for longer periods may be possible in respect of designated countries that provide for longer periods of protection under their domestic design laws. Renewal may be effected for some or all of the countries originally designated. Renewal fees are payable to the International Bureau.

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