The UK Government has announced that, following positive feedback to its recent consultation, the nation is set to accede to the Hague Agreement for Industrial Designs in its own right.
The Hague Agreement is a system that makes it possible to obtain protection for industrial designs in multiple jurisdictions, with the filing of a single application. As well as providing a registration system with standard fees (payable in Swiss Francs) and procedures, the Agreement enables applicants to register their designs in any contracting state, all through the International Bureau of the World Intellectual Property Organisation (WIPO).
Designs beyond Europe
The European Union is already one of the Hague Agreement's current 49 members and has been since 2008. However, in light of the recent accession to the Agreement of Japan and the USA, the UK Government decided that the time had come to consider the merits of joining in a national capacity.
The Intellectual Property Act 2014 anticipated the possibility of the UK joining the Hague Agreement in its own right, providing legal framework for its implementation. Responses to the consultation put out by the Government in Autumn 2015 were few in number but unanimous in their support for the Government's proposals.
By joining in a national capacity those rights holders who wish to designate the UK on their applications will be able to do so without designating the whole EU and incurring the associated translation and legal fees. This is expected to be of benefit primarily to SMEs who may wish to operate in a limited number of markets and can now target their resources more efficiently to those countries where they actually do business.
The move is also likely to be welcomed by overseas companies looking for design protection in the UK market, without wishing to incur the delay or expense of seeking it across the whole European Community.
Practical Measures
The steps necessary to implement the UK's national accession to the Hague Agreement are likely to be minimal.
The Government has announced its intention to restrict the filing of applications through the Agreement to direct filings with WIPO rather than enabling filings through the UK Intellectual Property Office (IPO).
The IPO will examine the applications after WIPO has checked that they conform to formalities requirements and applicants will be informed within 6 months if their application has been refused. This system mirrors the process that has proven to be effective for EU designated applications.
No separate register of Hague Agreement registrations designating the UK will be maintained. However, the Government proposes to direct UK users wishing to undertake a search, to the DesignView database which hosts EU national, WIPO and OHIM data on registrations, which it believes will be a cost-effective and simple search tool for businesses to make use of.
A quick Accession
Having received unanimous support in consultation replies for its accession plans, the Government intends to waste no time in carrying them out. A Statutory Instrument will be laid before Parliament in the next few months with the UK's accession to the Hague Agreement set to take place by the end of 2016.
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