The international registration system under the Hague Agreement is also referred to as the Hague system. The Hague Agreement consists of three separate Acts: the London (1934) Act, the application of which is frozen as of January 1, 2010, the Hague (1960) Act and the Geneva (1999) Act. Each Act has a different set of legal provisions which are independent of one another. A country may become a party to the 1960 Act and/or the 1999 Act and an intergovernmental organization (for example, the European Union or the African Intellectual Property Organization) may become a party to the 1999 Act. Natural persons and legal entities, which have the necessary connection with such a country or an intergovernmental organization may file international applications for registration of their designs in the International Register and, in that application, designate countries or intergovernmental organizations, in which they wish to protect their designs. Only countries and intergovernmental organizations which are party to the same Act(s) as the country or intergovernmental organization with which the applicant has the necessary connection, may be designated in the application.
To be entitled to file an international application (e-filing or paper filing DM/1), an applicant must satisfy at least one of the following conditions (entitlements):
No. The Contracting Parties/States includes only those in this list, which can be designated in an international application.
The following summarizes how the fee structure is applied:
You may pay the fees:
(note: the filing date is not affected if payment is not made at the time of the filing).
The fees do not differ.
It includes all 28 Member states which are: Austria; Belgium; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Luxembourg; Malta; Netherlands; Poland; Portugal; Romania; Slovakia; Slovenia; Spain; Sweden and the United Kingdom.
It is not obligatory, but it is possible if the country in question is a member of the Hague System.
It includes all 17 Member states which are: Benin; Burkina Faso; Cameroon; Central African Republic; Comoros; Congo; Côte d’Ivoire; Equatorial Guinea; Gabon; Guinea; Guinea-Bissau; Mali; Mauritania; Niger; Senegal; Tchad and Togo.
In principle, it is possible. However, there is an exception under the 1999 Act (see declarations made by Contracting Parties). The application form DM/1 (E-Filing interface) indicates the Contracting Party(ies) concerned.
The scope of protection is defined by the reproductions (representations/views) provided of the design when filing an application. If maximum protection is sought for a design then the design should be fully represented, as only aspects visible in the reproduction will be protected. It may be necessary, therefore, to represent a single article from many angles and submit several different reproductions.
An applicant may choose to submit different views of the same design, in order either to illustrate all the characteristic features of a three-dimensional design or to comply with the requirement of the law of a designated Contracted Party which has made a declaration whereby it requires certain specified views of the product concerned.
Designs are classified in accordance with the Locarno International Classification for Industrial Designs. If there is more than one design to be included in the international application, all the designs must belong to the same class of the Locarno Classification
The priority of an earlier filing may be claimed (under Article 4 of the Paris Convention, on the basis of a first national or regional filing made in one of the States party to the Paris Convention or in a member of the World Trade Organization) in an international application on the condition that the international application is filed within six months from the date of the earlier filing. The advantage of claiming the priority of an earlier filing is that the date of that earlier filing is taken into consideration, rather than the filing date of the international application, should legal proceedings arise. The Office of a designated Contracting Party may request a copy of a priority document (directly from the holder), for example, in the context of a refusal where the Office takes the view that the priority document is necessary in order to establish novelty because of a disclosure of a design within the period from the date of the first filing until the filing date of the international application.
In principle, the publication of the international registration takes place six months after the date of the international registration. The applicant may request, in an international application, that the publication be deferred for a period which may not exceed 12 months (under the 1960 Act) or 30 months (under the 1999 Act) from the filing date or, where priority is claimed, from the priority date. However, under the 1999 Act, whether the deferment is possible or the maximum deferment period allowed is subject to the law of each Contracting Party. The application form DM/1 (E-Filing interface) indicates Contracting Parties concerned and those conditions.
At any time during the deferment period, the holder may request the publication of the international registration. However, the holder may not extend the deferment period.
Upon receipt of an international application for international registration, the International Bureau checks that the application complies with the prescribed formal requirements.
If the application complies with those requirements, the International Bureau records it in the International Register and sends a certificate to the holder. The International Bureau publishes the corresponding international registration in the International Designs Bulletin on WIPO’s website, which contains all relevant data concerning the international registration, including a reproduction of the industrial design(s).
If the international application does not comply with the applicable requirements, the International Bureau sends an “irregularity letter” to the applicant, inviting that person to make the required corrections within three months from the date of the letter sent by the International Bureau.
Every application for international registration is given a temporary internal processing number (the application number) which is used by the International Bureau of WIPO to identify or track that application while it is being processed. Once the same application is recorded in the International Register at WIPO, it becomes an international registration and is assigned an international registration number (in the format DM/...).
There may be situations in which early publication of an international registration of an industrial design is advantageous. This may be the case where under some national or regional laws the right in an industrial design may be enforced only after it has been published.
There are no additional fees for immediate publication.
In principle, the date of the international registration is the filing date of the international application. For instance, if the international application is filed directly with the International Bureau (as is always the case for E-Filing, but also in most cases for paper filings (form DM/1)), the date on which the International Bureau receives it will be the filing date, unless it contains any irregularities entailing a postponement of the filing date.
The term of protection is five years counted from the date of the international registration. An international registration may be renewed for one or more additional terms of five years, in respect of each designated Contracting Party, up to the expiry of the total term of protection allowed by those Contracting Parties’ respective laws (consult maximum duration of protection for total term for each Contracting Party).
Each designated Contracting Party has the right to refuse, in its territory, the protection for an international registration. The Office of a designated Contracting Party may notify the International Bureau of the refusal of the effects of an international registration within the applicable refusal period (under the 1960 (Hague) Act), such a notification must be communicated to the International Bureau within six months from the date of publication of the international registration in the International Designs Bulletin; under the 1999 (Geneva) Act, however, any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition, may declare that the refusal period of six months be replaced by a period of 12 months).
The International Bureau records in the International Register any refusal communicated by the Office of a designated Contracting Party in respect of an international registration, publishes it in the International Designs Bulletin and sends a copy of the notification of refusal to the holder of the international registration.
The holder of the international registration may request a review of, or appeal against the refusal in the designated Contracting Party concerned. The holder of the international registration has the same rights and remedies as he would have had if he had filed the industrial design in question directly with the Office that issued the notification of refusal. The ensuing procedure takes place solely at the national or regional level and is subject to the requirements provided for by the law of the Contracting Party concerned (such as the time limit, the appointment of a representative, etc.).
The International Bureau records any withdrawal of refusal or statement of grant of protection in the International Register and sends a copy to the holder of the international registration concerned. Such a withdrawal or statement is published in the International Designs Bulletin.
No. The examination of the application for international registration carried out by the International Bureau is limited to only the formal requirements (such as the language of filing, the designation of at least one Contracting party, etc.). The International Bureau does not examine any substantive grounds, such as novelty.
As a matter of principle, the refusal period starts from the date of publication of the international registration in the International Designs Bulletin on WIPO’s website.
A change in ownership may result, among others, from a contract (such as an assignment), or a court decision, or operation of law (such as an inheritance or a bankruptcy), or from the merger of two companies. A partial change in ownership in respect of only some designated Contracting Parties or only some designs is also possible. The recording of a change in ownership can only be requested by the new owner (transferee) or the holder as registered in the International Register (transferor). The new owner must be entitled to file an international application, i.e. have a connection to a Contracting Party to the Hague Agreement. That “connection/entitlement” is then considered in respect of each Contracting Party affected by the change in ownership designated in the international registration. (For more details, see paragraphs 13.07 to 28 in Chapter II: International Procedure (1960 and 1999 Acts) of the Guide to the International Registration of Industrial Designs under the Hague Agreement).
No changes may be recorded after the expiry of an international registration. During the six months following the date of expiry of an international registration, it is still possible to renew the international registration by payment of the renewal fee and a surcharge, as specified in the Schedule of Fees.
No. There is no provision for recording this restriction in the International Register.
No. There is no provision allowing for the recording of a license in the International Register.
Yes. Six months before the expiry date, the International Bureau sends an unofficial notice to remind the holder and his representative, if any, of the exact date of expiry. If, however, the holder or his representative does not receive said notice, this does not constitute an excuse for failure to comply with any time limit for payment of the fees due.
You have three options:
In principle, payment must have been received by WIPO on the expiry date of the international registration.
A late payment will be taken into account only if the renewal fees are in the WIPO bank or postal account within the so-called grace period (i.e., 6 months after the expiry of the international registration). In that case, a surcharge (50% of the amount of the basic fee) will be required. Once this grace period has ended, the international registration lapses due to non-renewal and is no longer valid.
Once the request for renewal has been recorded in the International Register, the certificate is sent by the International Bureau to either the registered holder or representative, as recorded in the International Register.
A certified copy can be obtained by sending a request to the Extracts Unit of the International Designs Registry, either by fax: +41-22-740-14-29 or by e-mail, to: firstname.lastname@example.org, indicating the name of the applicant, the reference number provided to the application by the International Designs Registry, the person to whom the document is to be sent (including full postal details) and the date on which the document is required. The fee for this service is 46 Swiss francs (CHF) for the first five pages and two Swiss francs (CHF) for each additional page after the fifth.
Extracts and (certified or non-certified) copies of international registrations can be obtained by sending a request to the Extracts Unit of the International Designs Registry either, by fax: +41-22-740-1417 or by e-mail, to: email@example.com, indicating which type of information is sought from the categories within Item VI. Information concerning published international registrations, and including the international registration number concerned and the person to whom this document is to be sent (including full postal details).
The payment options for this service are either through a current account with WIPO which, if applicable, should be indicated in the request or, after issuance of the invoice, by means of a bank/wire transfer in Swiss francs (CHF) to the WIPO bank account (IBAN No. CH51 0483 5048 7080 8100 0 Credit Suisse, CH-1211 Geneva 70, Swift/BIC: CRESCHZZ80A).
By subscribing to the Hague E-Alert service.