Advantages of the Hague System from the user s point of view Workshop ECTA BMM WIPO BOIP International Registration of Designs 12 December 2011, The Hague Pieter de Ruijter Novagraaf
Design is hot!
Perception Design: important for return on investment (attract the public, licensing purposes) But often difficult to enforce design rights against infringement
ECJ, 20 October 2011 Pepsico vs Grupo Promer Mon Graphic "That's one small step for a man, one giant leap for mankind." Neil Armstrong
Texts governing The Hague system The Hague Agreement London Act (1934) Frozen on 1 Jan 2010 The Hague Act (1960) Geneva Act (1999)
For Benelux residents: The Hague Act and Geneva Act The Hague Agreement London Act (1934) Frozen on 1 Jan 2010 The Hague Act (1960) Geneva Act (1999) Benelux European Community (1 Jan 2008)
Territorial coverage for Benelux residents The Hague Act (1960): Belgium, Belize, Benin, Côte d Ivoire, D.P.R. of Korea, Gabon, Greece, Italy, Luxembourg, Mali, Monaco, Montenegro, Morocco, Netherlands, Niger, Senegal, Suriname Geneva Act (1999): Albania, Armenia, Bosnia and Herzegovina, Botswana, Bulgaria, Croatia, Denmark, Egypt, Estonia, European Community (27), France, Georgia, Germany, Ghana, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Mongolia, Namibia, Norway, OAPI (16), Oman, Poland, Republic of Moldova, Romania, Sao Tome and Principe, Serbia, Singapore, Slovenia, Spain, Syrian Arab Republic, Switzerland, the former Y.R. of Macedonia, Turkey, Ukraine
The Hague System General rules Domicile / establishment / nationality applicant(s) of Contracting Party One single filing may be governed by more Acts depending on which Act home country and designated country are party to
Application procedure Formal requirements Direct filing with WIPO, no basic registration required (e-filing or on paper) or via Office of CP Application languages: English / French / Spanish Single design application Multiple design application, up to 100 designs, all designs must belong to the same Locarno class Basic fee, publication fees, country fees (WIPO fee calculator)
Application procedure Content (1) Identification of applicant(s) (natural person or legal entity) Indication of the product to which the design applies Clear representation of the design showing the characteristics DM/024 442 Court Den Bosch, 14 October 2008, Michaud vs Owens
Application procedure Content (2) Reproductions: photographs and/or graphic representations In black and white or in color Size of the views: max. 16 x 16 cm, min. 3 x 3 cm Unlimited # reproductions per design Design must be represented against a neutral plain background Description of characteristic visual features (no technical features of design s operation or possible uses)
Acceptable to WIPO? RCD 000106034-0001 Motor car bodies
Application procedure Examination WIPO examines formal requirements (no substantial examination on novelty or individual character) National offices of designated countries may issue a Notice of Refusal (e.g. lack of novelty if examined, or opposition possibility) national procedure Refusal period 6 months (The Hague Act) or 6/12 months (Geneva Act) after publication
Application procedure Publication International Design Bulletin on WIPO s website approx. 6 months after filing Deferment of publication: 12 months (The Hague Act) or 30 months (Geneva Act or if both Acts apply)
Application procedure Registration Registration date = application date, unless Notice of Irregularity Start protection: date of registration (The Hague Act) after expiry of refusal period and no refusal has been issued (Geneva Act) Protection subject to national law of designated country
WIPO vs BOIP / OHIM WIPO BOIP OHIM # designs in one application 100 50 unlimited same Locarno class YES NO YES # views per design unlimited unlimited 7 description of design deferment of publication up to 100 words, thereafter payment of extra fees max. 150 words max. 100 words 12 / 30 months 12 months 30 months
WIPO vs BOIP / OHIM WIPO BOIP OHIM # designs in one application 100 50 unlimited same Locarno class YES NO YES # views per design unlimited unlimited 7 description of design deferment of publication up to 100 words, thereafter payment of extra fees max. 150 words max. 100 words 12 / 30 months 12 months 30 months
Summary: Advantages The Hague System Simple and uniform registration procedure: o single request on a single form o common language o common currency Uniform management of the IR (e.g. transfer, changes, renewal), keeps IP portfolio less complex Online access to Design Bulletin Cost efficient Pole position for combination EU and other countries (CH, NO, TR, OAPI etc.)
Summary: Opportunities Let s welcome more parties to join The Hague: e.g. USA, China In general, increase awareness re design protection and adequate investment therein