The European Community Joins the Hague System
"The accession of the European Community is a major step towards broadening the geographical scope of the international design registration system." – WIPO Director General Kamil Idris.
On New Year’s Day this year, the long anticipated accession of the European Community (EC) to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs came into effect. The accession creates an interface between WIPO’s international industrial design operations and those of the EC’s industrial design system, allowing users – individuals and businesses in all participating countries – to obtain protection in the whole of the EC as well as in the other member countries of the Geneva Act of the Hague Agreement by filing one single application for the registration of their industrial designs.
Such an international registration will have effect in as many members of the Geneva Act as identified in the application for registration, except any that refuse protection within the required time-limit. If protection is not refused by the EC’s industrial design office, the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM), protection of the industrial designs in question will be effective in all 27 EC member states just as if the applicant had applied or registered directly with OHIM.
Under the Geneva Act, an intergovernmental organization can join the Hague System if it has an office through which industrial design protection can be obtained in all the territories covered by the organization. This is the second time that the EC has signed up to a WIPO-administered treaty, having already acceded to the Madrid Protocol for the international registration of trademarks in 2004. So far, the EC is the only intergovernmental organization to have acceded, as a bloc, to a WIPO treaty. The EC becomes the 47th member of the Hague System.
|The Geneva Act of the Hague Agreement|
Operational since 2004, the Geneva Act of the Hague Agreement enhancesthe Hague System by making it more compatible with the procedures for the registration of industrial designs in countries such as the United States and Japan where protection of industrial designs is contingent on examination to determine the acceptability of an application. The Geneva Act offers flexibilities such as:
Changes to the Hague System
On January 1 a number of changes to the administration of the Hague System came into effect, simplifying and revising the fee structure as well as reducing filing costs for applicants from the least developed countries (LDCs).
The simplification of the fee structure eliminated the distinction between reproductions to be published in black and white and reproductions to be published in color, and fixed a single fee per reproduction at 17 Swiss francs. The fee per page – where the reproductions are submitted on paper –remains unchanged, but this fee may be circumvented by filing the application through the new WIPO e-filing facility.
Secondly, the standard fee structure has been revised. It will be recalled that an international application is subject to the payment of a standard designation fee in respect of each designated Contracting Party that has not made an individual fee declaration. Apart from the case of an intergovernmental organization, the possibility of making an individual fee declaration is open only to States whose registration office carry out an ex officio novelty examination.
In order to better reflect the nuances that exist between minimal formality examination and ex officio novelty examination, the Hague Assembly approved an amendment of Rule 12(1)(a)(ii) and (iii) of the Common Regulations under the Hague System, along with amendment of the Schedule of Fees, for the purpose of introducing three different levels of the standard designation fee, as follows:
- level one, for Contracting Parties whose registration office does not carry out examination on substantive grounds;
- level two, for Contracting Parties whose registration office carries out examination on substantive grounds other than novelty (for example, on issues such as the definition of a design, public order and morality, or the protection of State emblems); and
- level three, for Contracting Parties whose registration office carries out examination on substantive grounds, including a limited examination as to novelty (for example, an examination as to local novelty only, when the criterion for the validity of the design right is worldwide novelty), or examination as to novelty following opposition by third parties.
The application of levels two or three will be dependent on the making of a declaration by Contracting Parties, indicating the level of examination carried out by their Office. Otherwise, level one will apply by default. This requirement of a declaration will ensure that users are aware of the precise level of standard designation fee applicable in respect of any given Contracting Party. The making of any such declaration, which cannot take effect before April 1, 2008, will be announced under Information Notices on the WIPO website.
Reduced filing costs for least developed countries
Lastly, in order to enable design creators from LDCs to benefit more easily from the Hague System, the Hague Assembly approved an amendment to the Schedule of Fees, reducing the filing costs for applicants from LDCs. Apart from the individual fees which a Contract Party may elect to receive, the amendment will consist of a reduction to 10 percent of the regular amounts of all the fees prescribed in the Schedule of Fees under the Hague System, rounded to the nearest full figure, for ease of administration. The reduction will be offered to all applicants whose sole entitlement to file an international application for industrial design protection under the Hague Agreement is a connection with an LDC, in accordance with the list established by the United Nations. If there are several applicants, each will be required to fulfill such criterion.
With respect to the payment of individual fees by design applicants from LDCs, the Assembly of the Hague Union approved a recommendation to encourage Contracting Parties that make, or have made, an individual fees declaration, to indicate that for international applications filed by applicants whose sole entitlement is a connection with an LDC, the individual fee payable with respect to their designation is reduced to 10 percent of the fixed amount.
|E-Filing for Hague System|
On January 14, WIPO launched an online facility for filing international industrial design applications under the Hague System. This new facility allows applicants to enter the bibliographic data and upload the images for their industrial design applications via a secure web interface. The first two electronic applications were received within 24 hours of the facility being made available.
The online filing facility is designed not only to make the application process easier for users, but also to simplify the examination process at WIPO. With the accession of the European Community to the Geneva Act of the Hague Agreement, the number of applications under the Hague System is expected to increase substantially.
In 2007, WIPO received 1,147 applications for international registration of industrial designs under the Hague System, covering a total of 6,481 designs and equivalent to 12,749 country registrations (i.e. designating a total of 12,749 countries).
Gregoire Bisson, WIPO Sector of Trademarks, Industrial Designs and Geographical Indications