Hague Users Speak
European car manufacturers are major users of the Hague System, with Germany’s DaimlerChrysler, Adam Opel, Porsche and Volkswagen topping the list. WIPO Magazine spoke to a representative from a long established user, DaimlerChrysler; and then to a first-time applicant, sports car designer Jean-Paul Oyono. Here is what they had to say about their respective experiences of the Hague System.
How has DaimlerChrysler’s use of the Hague System increased?
The first application was filed February 2, 1959. Ten years ago the company was registering 36 industrial designs in 34 applications. Last year, we registered 223 industrial designs in 46 applications
Can you give us some examples of DaimlerChrysler designs registered under the Hague System?
The designs we registered most recently are for the New A-Class; new ML-Class; CLS-Class. DaimlerChrysler’s best known industrial design is the SL gullwing door, filed under the Hague System in 1959.
What would you consider the main advantages of the Hague System?
The fact that one application gives wide country coverage. It is cost effective. And there is no need for an agent. The entry into force of the Geneva Act will bring wider country coverage and future benefits, but we will not feel the effect until Germany signs the Act.
DaimlerChrysler uses the German national system, the European Community System and the Hague system. How would you compare them?
The decision as to which system to use to register a design is made on a case by case basis, depending on the particular product and the market. For example, we would take into account in which countries protection is necessary; the spare parts clause in the EU*, the different grace periods and/or deferment periods.
The advantages for us of the German national system are filing in our own language; multiple applications [as with the Hague and the European systems]; the short mailing distance to the German Patent and Trademark Office, which means a same-day application date; the 24-hour post-box; the possibility of postponement for 30 months; the 12 month grace period; and the full protection for spare parts.
The European system offers the advantage of one application providing uniform protection in all European Union member states with a single examination. It is possible to file in German; it offers a uniform postponement period of maximum 30 months, and a uniform grace period of 12 months.
The Hague System offers the greatest scope in terms of countries, both in Europe and worldwide. The system works on the basis of national effect in each country. The disadvantages are the lack of uniform regulation of grace periods, deferment, duration, fees, etc.
What improvements would you like to see to the Hague System?
For the time being, there are no problems for DaimlerChrysler anymore – thanks to the help of WIPO. But it is a complicated administration system with many exceptions; the fee system is complex. A fee calculator might help, but a unified country fee system would be easier as would a single fee for publication, rather than charging per copy and per page. The application form is not easy to understand. More seminars and explanatory notes in more languages (e.g. Spanish, German) might help.
*The EU’s definition of spare part includes things such as parts of cars, bumpers, bonnets (engine hoods), lights, etc. These are not excluded from registration but they have limited protection.
Jean-Paul Oyono, independent car designer
French-Cameroon national Mr. Jean-Paul Oyono is a sports car designer, based in Switzerland. With no corporate backing, he needs to minimize the legal and administrative costs of protecting his IP; hence he came in person to WIPO to obtain information on the Hague System and to register his designs.
A design from Mr. Oyono’s portfolio
How did you become a car designer?
I’ve always wanted to design cars. The Art Center [College of Design]has a reputation as the innovative leader in art and design education, especially in the car industry. I went to their European campus in Vevey, Switzerland. Then, I worked for BMW and indirectly for the Fiat Group. Now I am launching my first independent project.
Can you say more about the project?
I’ve designed a mid-engine sports car. The level of involvement of the designer from concept to realization of the final product is very high. When designing, one must understand the whole process from engineering to marketing and take it all into account in the design. The design is there. Now, in order to launch the project, which requires various experts – electronics, engineering, etc – I need to advertise it. But I can’t disclose my design, in case someone else appropriates it. Registering it under the Hague System gives me the freedom to do so. Non-disclosure clauses would not suffice.
How did you find out about WIPO’s services?
I had a problem on a previous project while working as a consultant when an Italian design subcontractor claimed my design as its own. You’re not entirely prepared for that kind of situation when you go to design school. Now I’m keener on protecting my ideas. I want any exploitation of my work to recognize my paternity. I had vaguely heard of WIPO, but it remained obscure. After I had my idea stolen, a friend told me about the protection of industrial designs.
Was it difficult to understand how to register your design?
I read up on the Hague system, so I understand the basics, but it is rather legalistic and technical. I also spoke to the person responsible for the registrations at WIPO. From him, I learned some things I would have never thought of, like the need also to protect scale models of the car.
What are the pluses/minuses of the Hague system for you as an individual user?
International recognition – filing an international application through WIPO enhances credibility, which will be recognized in the negotiation process and which permits the creator to be more at peace. The big disadvantage for independents like me is [coming up with funds] to cover the cost. I know the argument is that it works out cheaper than filing separate applications in several different countries, but registration should cost less for individual users than for corporations, or there should be more ways to adjourn payments.
For further information, contact Mr. Oyono.