19 Feb International Designs: The Hague System
The Hague System provides a flexible way to register designs in selected member countries by filing a single international application. The application procedure and the renewal procedure are centralised but the cost depends on the number and on the identities of countries selected.
The Hague System has been around for quite a long time – in one form or another since the 1920s – but it has never generated any significant interest here because the United Kingdom was not a member country, effectively closing the system to local individuals and companies. Even when the European Union (EU) joined the system in 2008, it was still of only limited attraction because few of the member countries outside the EU were of real commercial importance (you can see a full list here: www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf).
But the recent expansion of the Hague System to include the United States, Japan and South Korea makes it more useful for some clients. This an important step for the United States in particular, because it does not currently have a streamlined, low-cost system for the registration of designs, relying instead on a modified version of the patent system. It will be interesting to see if this expansion encourages other countries like Canada and China to join in the future.
With the Hague System, there is no need to instruct local attorneys to handle the application process in the countries of interest, so significant cost savings can be made in comparison with separate national filings. This would make the Hague System a practical option for a client wanting to obtain design protection in the both the EU and the United States, for example.
An application using the Hague System can include multiple designs – up to 100 – as long as the products are all in the same class of the International Classification of Industrial Designs (Locarno Classification). The application is handled centrally by the International Bureau of the World Intellectual Property Office (WIPO) but must meet the local criteria of the individual member states for design protection. If a national office considers that a design is not capable of protection (e.g., that it is not novel) it will notify the International Bureau that the application is refused for that particular country. There is an opportunity to argue against a decision to refuse protection, normally by appointing a local attorney. Importantly, a decision to refuse protection in one country, does not affect the validity of the registration in any of the other selected countries.
Please get in touch with us if you would like any more information on how to make the most of protecting your designs in this country or overseas.