What is the Hague Design System and how does it work?
The Hague Design System provides a mechanism for acquiring, maintaining and managing design protection internationally across members of the Hague Union. A single application is filed with the International Bureau of the World Intellectual Property Organization (WIPO), which effectively registers the design in each of the Contracting Parties (countries or intergovernmental organizations) designated.
At present, it is possible to register up to one hundred designs in 73 Contracting Parties (including the US, European Union and Japan). A complete list is available on the WIPO website. If registered in the UK, for example, it is possible to gain up to a period of 25 years’ protection.
An applicant must satisfy one of the following conditions to file a Hague Design System application:
- be a national of a Contracting Party, or a Member State of an intergovernmental organization which is a Contracting Party (e.g. European Union); or
- be domiciled in the territory of a Contracting Party; or
- have a real and effective industrial or commercial establishment in the territory of a Contracting Party; or
- habitually reside in a Member State/organization.
The application may be filed directly with the International Bureau in Geneva, or at the office of a Member State. The application must be made in English, French or Spanish via either electronic filing or in hard copy using the official form available on the WIPO website. Unlike the Madrid Protocol on Trade Marks, prior national registration is not required when filing under the Hague Design system. The application must contain a reproduction of the industrial design in question (i.e. the ornamental or aesthetic aspect of the product), alongside designation of those Contracting Parties for which protection is sought.
Official fees consist of a basic fee, publication fee and a designation fee in respect of each organisation, payable in Swiss Francs. Fees may vary between member states and organisations.
The Hague Design System involves a two-stage application assessment process:
1. Examination by the International Bureau – checking the application complies with formal requirements, for example, payment of official fees. The quality of a design representation(s) must be of a certain standard proscribed by the Bureau. Defects identified at this stage must be corrected within three months of identification, or the application is abandoned.
2. Substantive examination by the office of each designated Contracting Party. The application is then published on the International Designs Bulletin via the WIPO website. Offices of a Contracting Party have six months from the date of publication of the application to issue a notice of refusal to the International Bureau, if they feel the design has not satisfied the law or national legislation of that Contracting Party.
Note, the Hague Design System is merely an agreement for international procedure. It is therefore not permissible for the International Bureau to reject a Hague System application on substantive grounds because they do not examine national legislation. Likewise, a notice of refusal cannot be issued based on inadequate formal requirements because the International Bureau makes this assessment.
What are the main advantages of the Hague Design System?
Filing designs in multiple countries is expensive, and legal and administrative procedures vary substantially between jurisdictions. The Hague Design System arose from a need to simplify this inefficient process.
Filing a single application, in one language, on payment of a single set of fees in one currency, to the International Bureau (as opposed to filing separate national applications) naturally saves time, administrative burden, and ultimately, costs. The Hague Design System process also avoids potential procedural and language complications which may differ between member states.
As a result, management of the resulting international registration has led to a procedural improvement in numerous ways. For example, the Hague Design System avoids the need for monitoring deadlines for renewals that may vary from one State to another. In addition, change in ownership or address can be carried out via one simple step at WIPO.
Key issues
Despite its benefits, there are no uniform standards between contracting parties relating to the format of the images used to represent the design. As a result, each country will examine the application based on different laws and criteria, and the protection that is granted (or denied) will vary even though the same images are used. It is doubtful that this will change any time soon.
Additionally, the system will not benefit design owners who want protection in a country that is not currently a Contracting Party. For those countries, national filings are required.
Summary: when should I consider the Hague Design system?
The Hague Design system is useful where:
- the owner is interested in protection in signatory countries;
- the images used in the Hague application will offer the appropriate protection in each of the designated countries; and/or
- the design right may be assigned, or the owner may change its name.
