It is now possible, as of 13 June 2018, to designate the UK as an individual country in a Hague design registration. The Hague System for the International Registration of Industrial Designs, administrated by the World Intellectual Property Organization (WIPO), provides a mechanism for an industrial design to be registered in over 60 jurisdictions via a single application.
Availability of the Hague System
The Hague System coexists with other design registers of the national patent offices and is available subject to the following considerations.
- The Hague System can be considered an exclusive club, and it is a closed system similar to the Patent Cooperation Treaty (PCT). Those wishing to use the Hague System need to qualify by domicile, nationality, place of business and/or residence.
- On a practical level, even though the Hague System fulfils its promise of a single point of contact for submitting a design application, the rules on the effects of design protection are not harmonised across Hague member states. In order to achieve a comparable scope of protection in different countries, it may be necessary to file different design applications complying with different formal and substantive requirements.
- Different member states apply different grace periods to protect a design registration from invalidity in view of a disclosure pre-dating the registration. Some member states offer no grace period at all and some allow up to 12 months, with the effect that the same design may be validly registered in some countries and would be invalid in others.
- Publication time lines differ across member states, with some jurisdictions allowing publication very soon after filing. This requires careful preparation of a filing strategy to avoid premature disclosure of a design intended to remain secret for a limited period of time after filing. Indeed, publication of a Hague design registration may invalidate a later design registration for the same design in a country without a grace period.
- As the Hague System allows designations of foreign countries from the outset, it may still be necessary to secure a foreign filing licence from a national office for each design in a registration.
Tips for using the Hague System
Furthermore, particularly for users familiar with design registrations administrated by the UKIPO and the EUIPO, the Hague System differs in a few aspects which should be considered during preparation of a design filing strategy.
- The states in which protection is sought need to be declared on filing. It is not possible to add designations after filing.
- Likewise, the eligibility requirements of the applicant need to be fulfilled on filing. Particularly in the field of industrial designs which often involves commissioned work, it is important to clarify ownership of each design variant.
- It is possible to file multiple designs in a single application, benefitting from a fee reduction. However, the eligibility requirements for a multiple design fee reduction differ in some jurisdictions. It is not possible to utilise multiple-design status for some designated jurisdictions and not for others.
- A few member states, such as Norway or the US, have strict rules on declaring the identity of each designer. This is in contrast to the UKIPO which does not impose this requirement, and in contrast to the EUIPO which allows a "team" of designers to be named.
- Applications filed by a legal representative need to be accompanied by a Power of Attorney, and this is a requirement on filing – stricter than may be known from corresponding PCT rules.
- When filing online, the WIPO e-filing system allows selection only of existing product indication terms. In some jurisdictions, this may affect the scope of protection or eligibility for fee reductions.
- WIPO charges fees that are not used by the UKIPO or EUIPO, such as a word-count based fee for descriptions exceeding 100 words.
- The Hague System offers certain benefits such as the utilisation of the Priority Document Access scheme, which can avoid post-filing costs for substantiating a priority claim.
Dual coverage for design registrations in the UK and in the EU may indeed be popular. Since the UK's referendum in June 2016 to leave the European Union ("Brexit"), it has been reported that design registrations in the UK increased by 95% (in August 2016, compared with August 2015). This may at least in part be influenced by dual filings of registrations in both the UK and the EU, driven by the desire to ensure design protection is in force in the UK regardless of the post-Brexit status of an EU-wide design registration in the UK.
With regard to obtaining single-registration coverage in both the UK and the EU, the formal requirements, as well as the scope of protection provided by design registrations, has been harmonised between the UK and the EU: an application prepared conforming to either UK or EU requirements will usually provide a comparable scope of protection in both jurisdictions. As such, the Hague System is an attractive option to register designs designating the UK and to include, at this opportunity, EU coverage in the same application.
Outlook for the Hague System
The UK's accession to the Hague System coincides with a phase of increased momentum for the Hague System. Originally signed as the "Hague Agreement" in 1925, the Hague System had not been ratified by many large industrial nations until recently; however, in the last three years, the USA, Japan and Russia have joined the Hague System. Canada and Australia, too, have in the meantime concluded preparatory consultations (Canada in January 2018, Australia in May 2018), and such consultations are expected to be followed by an accession to the Hague System in the foreseeable future. Of perhaps growing importance is the possibility to designate the Democratic People's Republic of Korea via the Hague System since 2016.
Based on the recent momentum in accessions, the Hague System is likely to become a powerful tool in obtaining design protection across a number of "blocs" that otherwise do not offer a common design register. For those wishing to register a design in Europe, the Hague System allows designating almost all countries in geographical Europe, both EU and non-EU. At the same time, the Hague members include a large number of Commonwealth nations and, once Canada joins, also the entire G7/G8 bloc.
Your usual Marks & Clerk attorney can guide you to utilise the Hague System to its best effect.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.