The termination of the 1934 Act became effective on October 18, 2016. The application of the 1934 Act had already been frozen since January 1, 2010. It has not been possible to file international deposits under the 1934 Act, or to make designations governed by that Act since that date. However, the prolongation (the renewal) of designations made under the 1934 Act before January 1, 2010, and the recording of any changes affecting such designations remains possible in the International Register up to the maximum duration of protection under the 1934 Act, which is 15 years1.
All activities under the 1934 Act will gradually diminish, and, finally, terminate at the latest on December 31, 2024, i.e., 15 years after the last possible deposits or designations under the 1934 Act were made.
Rule 37(1) of the Common Regulations provides for a transitional provision relating to the 1934 Act.
Since January 1, 2010, no new registrations or designations under the 1934 Act have been allowed to be recorded in the International Register. However, those with a registration date prior to January 1, 2010, remain in force. This means, more precisely, that those registrations and designations could be the subject of a renewal or any other recording provided for in the version of the Common Regulations that was in force before January 1, 2010.
As provided for in Rule 37(1)(b), the Common Regulations, as in force before January 1, 2010, that is the Common Regulations Under the 1999 Act, the 1960 Act and the 1934 Act of the Hague Agreement, as in force on January 1, 2009, remain applicable to an international application governed exclusively by the 1934 Act (refer to “International registrations resulting from international applications governed exclusively by the 1934 Act”) and filed before that date and that was still pending on that date, as well as in respect of any Contracting Party designated under the 1934 Act in an international registration resulting from an international application filed before that date.
An international application was considered as governed exclusively by the 1934 Act where all the Contracting Parties designated in that international application were designated under the 1934 Act.
As a general principle, the international procedure applies equally to international registrations resulting from international applications governed exclusively by the 1934 Act, subject however to the exceptions mentioned below.
Rule 30(1)2
Any communication concerning an international registration resulting from an international application governed exclusively by the 1934 Act must be in French. This is in contrast with communications in respect of the other kinds of international registrations, which may be in English, French or Spanish. The recording and publication of any new data will also be made only in French. (The publication of an international registration in the Bulletin under the 1934 Act contains only bibliographical data relating to that registration.)
Rule 30(2)(a)2
The 1934 Act does not provide for the possibility for the Offices of the designated Contracting Parties to notify a refusal of protection, therefore, international registrations resulting from international applications governed exclusively by the 1934 Act may not be the subject of such refusals.
Rule 30(2)(j)2
A change in ownership cannot be recorded in respect of a Contracting Party designated under the 1934 Act if that Act would cease to be applicable following the recording of the change in ownership concerned. For example, assuming that Contracting Party A, bound by both the 1960 and the 1934 Acts, has been designated under the 1934 Act and that the international registration concerned is transferred to a new owner originating from Contracting Party B, bound exclusively by the 1960 Act, this change in ownership could not be recorded in the International Register because the 1934 Act would cease to be applicable in such a case. This derogation from the general principle concerning the possibility of recording a change in ownership in the International Register is due to the number and types of features which are exclusive to the 1934 Act.
Rule 30(2)(k)2
Only one renewal may be requested under the 1934 Act (which provides for a maximum period of protection of 15 years divided into two periods: one period of five years and one of 10 years). Having regard to this specific feature of the 1934 Act, the renewal of an international registration resulting from an international application governed exclusively by the 1934 Act, for the second period of protection of 10 years, could have been requested at the time of filing the international application concerned.
Rule 30(2)(l),(m) and (n)2
The renewal of an international registration resulting from an international application governed exclusively by the 1934 Act is subject only to the payment of the basic fee, irrespective of the number of designated Contracting Parties. The amount of that fee is prescribed under item IV of the Schedule of Fees, part of the Common Regulations in the version in force before January 1, 2010.
Rule 30(2)(l)2
The international registrations resulting from international applications governed partly by the 1934 Act comprise three categories, namely:
In relation to an international registration resulting from an international application governed partly by the 1934 Act (refer to “International registrations resulting from international applications governed partly by the 1934 Act”), the Contracting Party or Parties designated under the 1934 may not notify a refusal of protection since such possibility is not envisaged under the 1934 Act.
Rule 31(2)(c)(ii)2
A change in ownership cannot be recorded in respect of a designated Contracting Party if the 1934 Act would cease to be applicable, or would become applicable, in respect of that Contracting Party following the recording of the change in ownership. For example, assuming that Contracting Party A, bound by both the 1999 and the 1934 Acts, has been designated under the 1999 Act and that the international registration concerned is transferred to a new owner originating from Contracting Party B, bound exclusively by the 1934 Act, this change in ownership could not be recorded in the International Register given that the 1934 Act would become applicable in such a case (refer also to “Renewal”).
Rule 31(2)(b)2
In relation to an international registration resulting from an international application governed partly by the 1934 Act (refer to “International registrations resulting from international applications governed partly by the 1934 Act”), a renewal cannot be recorded with respect to Contracting Parties designated under the 1934 Act where the maximum duration of international protection of 15 years has expired. This differs from the situation applicable to Contracting Parties designated under the 1999 Act or the 1960 Act (refer to “Renewal of the international registration”).
Rule 31(2)(c)(iv)2
The renewal of a designation under the 1934 Act does not give rise to the payment of a designation fee.
Rule 31(2)(c)(iii)2
The Director General of WIPO received the required instruments of acceptance of termination or instruments of denunciation3 of the 15 Contracting Parties to the 1934 Act, namely, Benin, Côte d'Ivoire, Egypt, France, Germany, Indonesia, Liechtenstein, Monaco, Morocco, the Netherlands, Senegal, Spain, Suriname, Switzerland and Tunisia, according to their decision to terminate that Act which was taken at the Extraordinary Meeting of Contracting States to the London Act (1934), on September 24, 2009.
Consequently, in accordance with the above decision, and pursuant to Article 54(b) of the Vienna Convention on the Law of Treaties of May 23, 1969, the termination of the 1934 Act and of the Additional Act of Monaco, became effective on October 18, 2016, that is, three months after the deposit of the last required instrument of acceptance of the termination of the 1934 Act.
As the application of the 1934 Act was frozen since January 1, 2010, it was not possible, since that date, to file international deposits under the 1934 Act, or to make designations governed by that Act in an international application.
However, the prolongation (the renewal) of designations made under the 1934 Act before January 1, 2010, and the recording of any changes affecting such designations remain possible in the International Register up to the maximum duration of protection under the 1934 Act, which is 15 years.