No, you do not need a national/regional application or registration before filing an international application.
You can include up to 100 industrial designs per application. If more than one design is included in the international application, all the designs must belong to the same class of the Locarno Classification.
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 it 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.
Upon receipt of an international application, 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 of the international registration to the holder. The International Bureau publishes the corresponding international registration in the International Designs Bulletin on WIPO’s website. The publication 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.
In principle, the scope of protection is defined by the reproductions (representations/views) of the design provided in the international application.
The conditions for the grant of protection are provided for in the national/regional legislations. The scope of protection may be different among the jurisdictions of designated Contracting Parties. Moreover, if the international registration is amended (for example, additional views are submitted) in a procedure before the Office of a designated Contracting Party, the information concerning such an amendment in that Contracting Party will be notified by the Office to the International Bureau and be made available through the International Designs Bulletin.
In accordance with Article 6 of the 1999 Act, priority of an earlier filing may be claimed 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 (or of a first international application, as the case may be when new Contracting Parties join the Hague System and the applicant wishes to use the Hague System to extend the protection of an industrial design that is the subject of a prior international application to those new Contracting Parties) in an international application, provided that the international application is filed within six months from the date of the earlier filing. Priority may be claimed at the time of the international application only.
The Office of a designated Contracting Party may request a copy of a priority document or the original document (directly from the holder). National or regional jurisdictions may have certain time limits for submissions of a priority document, and the priority claim is accepted only if the document is received within such a time limit, for example 3 months from the publication date of the international registration.
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, in accordance with the applicable law, a Contracting Party may make a declaration to the effect that no deferment is allowed or of a shorter period of deferment.. The application form DM/1 (E-Filing interface) indicates Contracting Parties concerned and the applicable deferment period, if any.
You may pay the fees:
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 each Contracting Party).
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.
In principle, there are two options to renew an international registration:
Under The Hague System legal framework, there are no requirements/restrictions as to how many and which views of an industrial design must be submitted. However, according to Rule 9(4) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement, a Contracting Party may refuse the effects of the international registration if the reproductions contained therein are considered not sufficient to fully disclose the industrial design.
In the above context, some Examining Offices, such as the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO), may issue a refusal on the ground that the industrial design has not been sufficiently disclosed by the reproductions. Furthermore, if by replying to such refusal you submit additional views disclosing a new element of the design, it is very likely that those Examining Offices will refuse your submission and maintain the refusal.
When preparing the reproductions of your industrial design in an international application, you must ensure that you have complied with the mandatory requirements set out in Rules 7 and 9 of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Furthermore, you may also consult the “Guidance on preparing and providing reproductions in order to forestall possible refusals on the ground of insufficient disclosure of an industrial design by Examining Offices”.
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 must notify the International Bureau of the refusal of the effects of an international registration within the refusal period of six months from the date of publication of the international registration in the International Designs Bulletin. However, under the 1999 (Geneva) Act, 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, 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, language, 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.
Even if the effects of an international registration have been invalidated in a designated Contracting Party, such invalidation will not have any consequences on the validity of the effects of that international registration in any other designated Contracting Party.
Invalidation proceedings concerning an international registration in a designated Contracting Party take place directly between the holder of the international registration, the competent authority and the third party. The proceedings are governed entirely by the law and practice of the Contracting Party concerned.
Where the effects of an international registration are invalidated in a designated Contracting Party and the invalidation is no longer subject to any review or appeal, the Office of the Contracting Party shall notify the International Bureau accordingly.
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 be requested by the holder as registered in the International Register (transferor) by using form DM/2. If it is requested by the new owner (transferee), the form must be signed by the holder, or the request must be accompanied by an attestation from the competent authority of the holder’s Contracting Party that the new owner appears to be the successor in title of the holder.
Copies (certified or non-certified) and/or extracts can be obtained by sending a request through Contact Hague.
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).
During the transition period, European Union law remains applicable to and in the United Kingdom. Hence, international registrations under the Hague System designating the European Union, including such international registrations recorded during the above mentioned transition period, continue to have effect in the United Kingdom during that period.
As from January 1, 2021, the designation of the European Union in those international registrations will no longer have effect in respect of the United Kingdom. However, if the international registration has been protected in the European Union before the end of the transition period, the United Kingdom will automatically create equivalent national rights at the end of the transition period. The holder of an international registration will not be required to undertake any particular administrative procedure in the United Kingdom and will become the holder of a re-registered design right in the United Kingdom under the law of the United Kingdom for the same design. This will be carried out free of charge by the United Kingdom Intellectual Property Office (UK IPO).
The designation of the European Union in those international applications and registrations will no longer be valid in the United Kingdom. However, the applicant of such a pending international application will be able to file an application in the United Kingdom within nine months from the end of the transition period, retaining the filing date of the international application. Similarly, if the international registration has not been subject to a statement of grant of protection issued by the European Union Intellectual Property Office (EUIPO) at the end of the transitional period, the holder of the international registration will be able to file an application in the United Kingdom within nine months from the end of the transition period, retaining the date of the international registration.
An international registration designating the European Union that has not been published on January 1, 2021, including where publication has been deferred, will be treated by the United Kingdom as being equivalent to a pending application. This means that a holder can file an equivalent United Kingdom registered design application within nine months after January 1, 2021.
Applicants interested in protection for their designs in the United Kingdom need to designate the United Kingdom also during the transition period independent of a designation of the European Union if they want to enjoy the ability to manage their rights in the United Kingdom and in the European Union under the same international registration. Otherwise, even if the international registration is protected in the European Union before the end of the transition period, as of January 1, 2021, holders will not be able to manage with the International Bureau of the World Intellectual Property Organization (WIPO) the re-registered design rights created on the basis of a European Union designation in the United Kingdom.
As from January 1, 2021, any United Kingdom rights created on the basis of a European Union designation will be independent United Kingdom rights, and so may be assigned or renewed separately from the original international registration. Such a re-registered United Kingdom design will retain the existing renewal date of the corresponding international registration.
Such a re-registered United Kingdom design with a renewal date falling at any time after January 1, 2021, will have to be renewed with the UK IPO. Any early payment of the renewal fees with the International Bureau of WIPO on a date prior to January 1, 2021, in respect of the international registration containing the original designation of the European Union will have no effect in respect of the re-registered United Kingdom design.
The United Kingdom will also create equivalent national rights at the end of the transition period from any international registration that has expired during the six months prior to January 1, 2021, and that has not been subject to a renewal with the International Bureau of WIPO by January 1, 2021. In this case, the international registration has to be renewed with the International Bureau of WIPO within the six months following the date on which renewal was due and the holder has to inform the UK IPO that their corresponding international registration has been renewed with the International Bureau of WIPO. If the expired international registration is not renewed within this six-month period, the United Kingdom design will be removed from the UK register on expiry of that period.
Disclaimer: The questions and answers provided on this page serve a purely informative purpose and are not a legal point of reference. They do not necessarily represent the official position of WIPO or its member states.