Workshop ECTA-BMM-WIPO-BOIP

Transcription

1 Workshop ECTA-BMM-WIPO-BOIP International Registration of Designs Background and Key Principles of the Hague System The Hague December 12, 2011 Yves Closet Head Information and Promotion Section International Designs Registry

2 Contents Background What is the Hague System? Legal Framework Key Principles Geographical Scope of the Hague System Going Global Main Advantages Latest Developments Information and IT Tools

3 Background - What is the Hague System?

4 The Hague System is A procedural agreement for the centralized acquisition and maintenance of industrial design rights It provides a mechanism for the filing of an industrial design «internationally" (in Contracting Parties to the Hague Agreement) for the central management (postregistration)

5 The Hague System is One to Many Relationship File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated Bundle of Rights If no refusal is issued, the resulting international registration has the effect of a grant of protection in each designated Contracting Party

6 The Hague System is One to many relationships = Hague System Designated Contracting Parties Switzerland WIPO Turkey Singapour Norway European Union(EU)

7 The Hague System is Bundle of Rights - not determined by the Hague Agreement but governed by the law of each Contracting Party: the conditions for protection; the refusal procedure to be applied when deciding whether a design may be protected or not the rights which result from protection.

8 Legal Framework

9 Legal framework Acts in force: - The Geneva Act (1999) - The Hague Act (1960) Common Regulations under the 1999 Act and the 1960 Act Administrative Instructions

10 Key Principles

11 Key Principles No need for a basic application/registration Designation of the Contracting Party of the holder possible Most international applications are filed directly with the International Bureau (not via an Office) E-filing and e-renewal available Subsequent designation is NOT possible

12 Who can use the Hague system? Hague System = closed system: Entitlement to file an international application: the applicant needs a connection with a CPs via nationality, domicile, real and effective industrial or commercial establishment or habitual residence (Geneva Act only) Only CPs may be designated

13 Germany and the Hague System 1960/ /1999 WIPO

14 Procedure 1 Role of the International Bureau Formal examination (are the formal requirements met?) Registration and recording in the International Register Translation and Publication in the International Designs Bulletin Notification to Designated Contracting Parties (through the publication of the Bulletin on WIPO website) Effects of the international registration at this stage Same effect as a regularly filed national application in all Designated Contracting Parties

15 Procedure 2 Role of the Offices of designated Contracting Parties Possible substantive examination in accordance with national/regional legislation Possible opposition procedure within the Office Effects of the international registration at this stage Same effect as a regularly filed national registration

16 Geographical Scope of the Hague System Going Global

17 Contracting Parties 42 Geneva Act (1999) (including EU and OAPI) 16 Hague Act (1960) 58 Contracting Parties

18 Recent Accessions to the Geneva Act Rwanda (August 31, 2011) Finland (May 1, 2011) Azerbaijan (December 8, 2010) Norway (June 17, 2010) Germany (February 13, 2010)

19 Potential accessions to the Geneva Act Korea accession announced for October 2012 USA China Japan Tunisia

20 Main Advantages of the Hague System

21 Hague System is Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget Flexible, affording right holders great flexibility in targeting national, regional or global markets for particular goods

22 Why file via the Hague System to get a RCD? Fees often lower (i.e. 5 designs, 3 reproductions each 1,063 CHF) Unlimited number of reproductions for each design A single International Registration for subsequent management of RCD Possibility to enlarge the geographical scope to neighbouring countries

23 Protection in the EU and more NO EM* UA CH HR EM - European Union* HR - Croatia NO - Norway UA - Ukraine CH - Switzerland TR - Turkey TR

24 WHEN FILING ONE international application ONE international registration for all the designs included in the application In ONE language (English/French/Spanish) Payment of ONE set of fees Payment in ONE currency (= Swiss francs) Filed with ONE office (International Bureau - WIPO)

25 Central Management ONE request filed within the International Bureau in case of: Change in ownership Change in the name or address of the holder Renunciation Limitation ONE renewal request (e-renewal since )

26 Central management «Tailor-made» renewal Example: - Renewal of design No. 1 for BX and MA - Renewal of design No. 2 for EU and FI - Renewal of design No. 3 for IT «Tailor-made» assignment Example: - Assignment of design No. 1 for DE - Assignment of design No. 2 for NO

27 Hague System -- e-filing Very useful and user-friendly IT tool More than 80% of the international applications are currently filed through the e-filing interface The e-filing interface is available on the WIPO website

28 Hague System -- e-renewal The e-renewal interface, introduced in January 2011, is a successful IT tool More than 55% of the international registrations are currently renewed through the e-renewal interface The e-renewal interface is available on the WIPO website

29 Latest Developments

30 Hague System -- Latest developments Ad hoc Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs (held from May 30 to June 1, 2011 in Geneva) Main topics discussed: - Tightening of the publication cycle of the International Designs Bulletin («the Bulletin»); - New rule on the refusal of the effects of the recording of a change in ownership in the International Register; - Establishment of a Working Group to address the legal development of the Hague System

31 Hague System -- Latest developments Tightening of the publication cycle of the Bulletin - Proposal to tighten the publication cycle supported by MARQUES and discussed by the WG - Outcome of the discussion: the Bulletin, which is currently published once a month on the WIPO website, will be published on a weekly basis and the time lag will be reduced to one week - Target date for the implementation of the new publication cycle: January 1, 2012 (if no comment received by the IB from Offices of the CP by September 15, 2011)

32 Information and IT tools

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39 Dankeschön!