WORKSHOP ECTA BMM WIPO BOIP INTERNATIONAL REGISTRATION OF DESIGNS 12 DECEMBER 2011, THE HAGUE

15 December, 2011 WORKSHOP ECTA BMM WIPO BOIP INTERNATIONAL REGISTRATION OF DESIGNS 12 DECEMBER 2011, THE HAGUE Reported by Annick Mottet Haugaard, ECTA President, Partner, Lydian, BE and Bram Van Eeckhout, Lydian, BE The ECTA BMM WIPO BOIP workshop took place at the offices of the Benelux Office for Intellectual Property on 12 December 2011. This workshop was the fifth organized in a tour that began in the United Kingdom (11 February 2011), passed Italy (25 March 2011), France (1 July 2011) and Germany (26 September 2011) and will continue later on in Spain. The workshops all have the same purpose, namely to give a better understanding of and some deeper insights into the international registration of industrial designs. About 50 practitioners and inhouse counsels, mainly from the Netherlands, Belgium and Luxemburg attended the event. Introductory speeches were made by Hugues Derème, Deputy Director General of BOIP, Annick Mottet Haugaard, ECTA President and partner at Lydian and Tom Heremans, BMM President and partner at CMS DeBacker. Background and key principles of the The Hague system (as reported by Cecile Barrio for the previous workshop in Paris and amended as presented in Den Hague) Yves Closet, Head, Information and Promotion Section in WIPO s International Designs Registry, Brands and Designs Sector was the keynote speaker. The first part of his presentation dealt with the background and key principles of the Hague System that provides a mechanism for the filing of an industrial design internationally, in contracting parties to the Hague Act and the Geneva Act. The legal framework is bipolar since the Hague System consists of the Hague Act of 1960 and of the Geneva Act of 1999. Regulations and administrative instructions are common to the two acts. The European Union is a member of the Geneva Act of 1999. Since 1 January 2008, there is an interface between the two systems: the Hague system and the Community Design, meaning that designation of the Community design in the international registration is from that date, possible. With the European Union, the OAPI (African Intellectual Property Organization) is the second Contracting Party to be an intergovernmental organization. ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/2-513 52 85 Fax 32/2-513 09 14 E-Mail ecta@ecta.org Internet http://www.ecta.eu A company limited by guarantee. Reg. in England and Wales No. 1520996. Reg. address: 15 Southampton Place, London WC1A 2AJ, England. VAT No. BE0851518062

The Hague System is a one to many relationship. This means that the owner of an industrial design has the possibility to file a single international application for a single international registration in which one or more contracting parties are designated. The owner of the design has the opportunity to designate one or more contracting parties to the Hague Agreement (including the European Union). Contrary to the Madrid system for trade marks, subsequent designation is not possible. Another difference with the latter system is that the Hague System does not require a prior, basic national application or registration. If no refusal of protection is issued by WIPO, the design will be registered. If no refusal of protection is issued by the national offices of the designated contracting parties the international registration will produce the same effects in each of the designated contracting parties meaning a regularly filed national application with each national office, giving birth to a right of priority from which national extensions of protections are possible, as easily as it would be a national right. The national law of each contracting party governs the conditions for protection, the rights which result from protection and the refusal procedure to be applied when deciding whether a design may be protected or not. Such issues are not determined by the Hague System, since it is primarily a procedural agreement. The Hague System is a closed system, which is only available to contracting parties of the Hague Agreement (Hague Act or Geneva Act, the London Act of 1934 has been frozen as of 1 January 2010). The applicant needs a connection with a contracting party via nationality, domicile, real and effective industrial or commercial establishment or (under the Geneva Act only) habitual residence. As stated, the Hague system s legal framework of the Hague System has two Acts in force, namely: the Hague Act (1960 Act) and the Geneva Act (1999 Act). A certain number of countries are member of the first Act, the second Act, or a member of both Acts such as the Benelux countries. The consequences of membership are rather interesting since Contracting Parties members of the 1999 Act can only designate members of the 1999 Act. This is a chance for users connected to the Benelux countires since they can designate all the parties without any restrictions. Besides, some countries, like the UK, are neither member of the Act of 1960, nor member of the Act of 1999 but can access to the Hague system through their European Union membership. The procedure for an international application begins with a formal examination by the International Bureau of WIPO, to check whether or not the formal requirements are met. This is followed by a registration and recording of the international application in the International Register, which does not yet mean that the protection is effective in the designated contracting parties. The date of the international registration is the filing date of the international application. Then, the international registration is published in the International Design Bulletin whereby the designated contracting parties are notified. 2

Conscious of the International Designs Bulletin s limited monthly publication gave rise to different problems, WIPO managed to tighten the publication cycle of the bulletin, which as of 1 January 2012 will be published on a weekly basis with the time lag being reduced to one week. The offices of the designated contracting parties have the possibility to carry out a substantive examination in accordance with their national or regional legislation and the possibility to an opposition procedure within the Office. Each contracting party has the right to issue a refusal on substantive grounds (e.g. lack of novelty). Yves Closet discussed the geographical scope of the Hague System. There are currently 43 contracting parties to the Geneva Act of 1999 (including the EU and OAPI) and 16 contracting parties to the Hague Act of 1960. Recent accessions to the Geneva Act include Germany (February 2010), Norway (June 2010), Azerbaijan (December 2010), Finland (May 2011) and Rwanda (August 2011). The USA, China, South - Korea (North-Korea is already member to the Geneva Act of 1960), Japan, Tajikistan and Montenegro are potential accessions to the Geneva Act, following a decade of strong tendency of IP internationalization of which we are lucky to be the witnesses. Most of these countries need amendments to their law and this takes some time, but so far there has been a lot of progress. WIPO is hopeful that these significant countries will become contracting parties to the Geneva Act in the near future for the sake of the users. To what relates to the United States, the difference of conception (e.g., design patent) seems an obstacle and work needs to be done. It is believed that as soon as the United States will become a member to the Geneva Act, China who is trying to lose its reputation of a counterfeiting country will follow easily. There is however a difference of duration of the rights (10 years for China, at least 15 years for the Hague system) and diverging ways of working such as methodology and examiners practices but WIPO and China are working hand in hand to prepare China s future accession. Tajikistan s accession is anticipated for June 2012 and South-Korea has announced accession for October 2012. Yves Closet highlighted the many advantages of the international registration of designs. Firstly, the owner of an industrial design has the possibility to have up to 100 designs of the same Locarno class protected by filing a single international application. Secondly, the application needs to be filed with only one office, the International Bureau of WIPO. The owner of an industrial design has to pay only one set of fees (including the basic fee, designation fee and publication fee) and in one currency (Swiss francs). Lastly, an application has to be filed in one language (English, French or Spanish) and there is only one procedure. Also, when filing via the Hague system, the owner of an industrial design can benefit from the central management. In case of renewal, the owner only needs to make a single renewal request for example through the e-renewal interface available since January 2011. 3

In case of change in ownership, change in the name or address of the holder, renunciation or limitation, it can be recorded in only one request. The Hague System is cost-effective, efficient and flexible. Moreover, the Hague System gives the owners of designs great flexibility in targeting national, regional or global markets for particular goods. Also, there is the opportunity to file an unlimited number of reproductions of the design: there is no upper-limitation in the number of views that can be provided for (contrary to the Community Design system). The Hague Systems also provides a possibility to enlarge the geographical scope to neighboring countries. Latest developments are as previously mentioned the shortened publication cycle of the International Design Bulletin and the establishment of a Working Group to address the further legal development of the Hague System. How easy it is to file internationally (E-filing interface) (as reported by Cecile Barrio for the previous workshop in Paris and amended as presented in Den Hague) The second part of Yves Closet s presentation covered e-filing. It is recommended to file the international application through e-filing because of its easiness and its educational character. Yves Closet explained in detail to the audience how to use the e-filing system on the website as well as the possibility to ask for an immediate publication that coexists with the deferred publication up to 30 months (although some countries require a maximum deferment of 12 months) and the default publication in 6 months. The use of the Industrial Designs Fee Calculator was also presented as well as the optional contents of the e-filing (appointment of a representative, priority claim of an earlier application and international exhibition priority). Viewpoint of a representative of the Benelux Office for Intellectual Property Diter Wuytens, Counsel at the Legal Department of the Benelux Office for Intellectual Property was the second speaker who elaborated on the International Registration of Designs in the framework of the Benelux System (BOIP) and the European System (OHIM). Following the introduction of the Community Design in 2002, the Benelux office has been confronted with a substantial decrease in design registrations, from over 3000 filings in 2002 to more or less 1000 filings in 2010. The Benelux system, attractive for protection duration of (max.) 25 years and a single application valid for the entire Benelux territory remains popular for applicants including physical persons connected the Benelux countries. The European System facilitates a single application for the 27 countries of the EU. It bears no surprise that as of the beginning in 2002 OHIM notes a continuing yearly increase of European community registrations (until today up to 460.000 designs) 4

with a (prudent) estimation of 90.000 registered designs for the year 2011. Nationals from the Netherlands and Belgium rank respectively 7 th and 14 th in the top filers (for Luxemburg no figures were known). Similar to the BOIP, the European system provides for duration of protection of maximum 25 years. Different causes for the registration of industrial designs were underscored. As industrial designs make a product (more) attractive and appealing, they add to the commercial value of the product and thus increase the product s marketability. A registration aims then to safeguard a fair return on investment for the holder of the design. The granted protection, however, also serves consumers and the public at large as it is a mean to promote fair competition and honest trade practices and as it encourages creativity in the industrial and manufacturing sectors and contributes to the expansion of commercial activities and export of national products. Diter Wuytens finally outlined some specific elements of protection such as (i) the protection from the date of disclosure with a grace period of 12 months in both the Benelux System and the European System (i.e. the possibility for a design holder to register up until 12 months after the design has already been disclosed to the public), (ii) the automatic limited rights incurred through Unregistered Community Designs (iii) the exclusivity of the design holders rights (iv) the postponement of publication and (iv) the commercial value that the transfer and/or license of the (protected) design rights creates for the design holder. Advantages of the Hague System from the user s point of view Pieter de Ruijter, Senior IP Consultant and partner at Novagraaf was invited to give a user s point of view on the international design registration. Practice demonstrates that generally companies perceive (the registration of) designs as an important tool to safeguard the return on investment but that it is difficult to effectively enforce design rights against infringements. For companies which are confronted with other pertinent IP rights, notably trademarks and patents, the protection of design is often back in the line. Nonetheless design rights become more and more a hot item especially since the European Court of Justice recently passed a first substantive decision on design rights (decision of 20 October 2011 in the case Pepsico vs Grupo Promer Mon Gaphic with regard to Registered Community Designs, see for the full text http://eurex.europa.eu/lexuriserv/lexuriserv.do?uri=celex:62010cj0281:en:not). Pieter de Ruijter addressed shortly the territorial application and the general rules of the Hague Systems and raised a striking fact namely that Suriname, although member to the Hague Act of 1960, appears not to have a proper design legislation. Companies are said to be EU minded, but acknowledge many advantages of the Hague System (see below). One drawback of the Hague System that was already raised is that in case of one application for different designs, one and the same 5

Locarno class must be determined which might be burdensome for companies that operate in a certain sector rather than doing business in a specific type of product(s). As to the content of the Hague application procedure, Pieter de Ruijter raised the importance of a clear representation of the design showing the characteristics (apart from the identification of the applicant and the indication of the product to which the design applies). He referred to a decision of the Dutch Court of Den Bosch of 14 October 2008 (Michaud vs Owens) where the court annulled the design registration of a plastic bottle on the basis that the picture of the design that was submitted in the registration application was not clear enough, in particular with respect of the dimensions of the bottle. A neutral plain background, without other or similar objects in the background, and a good description of the characteristic visual features of the design are also recommended. The presentation was concluded with a useful table comparing the respective systems of WIPO - BOIP OHIM, where the different advantages of WIPO were highlighted including (i) the number of designs on one applications (100 as compared to 50 at BOIP), (ii) the number of views per design (unlimited as compared to 7 at OHIM) and (iii) deferment up to 30 months in case of the Geneva Act of 1999 (as compared to 12 months at BOIP). As a result, WIPO is considered to have a pole position for registrations where EU and other countries (Switzerland, Norway, Turkey, OAPI, etc.) are concerned. Experience of the industry regarding the registration of designs Judith van der Linden van Sprankhuizen, Trademarks Manager at Friesland Campina, gave a short introduction to her company s business: the sale of dairy products in more than 100 countries, with 4 business groups (Consumer Products Europe, Consumer Products International, Cheese & Butter and Ingredients) with an annual turnover of about 9 billion EUR. She underlined the importance of design protection for Friesland Campina, namely to safeguard not only a good return on considerable investments but also brand image, the ability to provide unique packaging of unique goods and other both decorative and/or practical purposes. Friesland Campina experiences that if a design also involves a technical feature this can pose difficulties in terms of design registration (for example a spoon conveniently hidden in the lid of a product with the purpose not to contaminate the dairy products under the lid, could stand in the way of a design protection of the lid). Designs are registered in countries where products are sold, where competitors are on the market and strategic countries such as Russia and the United Arab Emirates. The Hague Systems is praised for its simplicity and swiftness although the limited number of country is considered a disadvantage. Finally Peter van Deursen took the floor on behalf of Philips Intellectual Property & Standards (IP&S), an organization supporting the growth, competitiveness and profitability of the Philips sector (Healthcare, Lighting and Consumer LifeStyle), active in 17 countries, employing 450 people and today having 63.000 design rights 6

in portfolio. Basically IP&S registers all new designs. If minor modifications are developed to a registered design, IP&S does not take out a new design registration (for example a coffee machine with slight modifications over time). The main purpose of registration is to have a powerful weapon to act against counterfeiting, to show competitors that Philips protect new designs and to create exclusivity for their products. Designs are registered prior the product launch and in the countries where Philips manufactures, where competitors are on the market, and mostly include the EU, Norway, Island, Switzerland, Singapore and the BRIC countries (Brazil, Russia, India and China). The Hague system is mostly employed and praised for being userfriendly with an increasing amount of countries that are becoming member. Afterwards, the chairs and speakers exchanged some views with the audience. They notably comment on the advantages of the registration of a design as a trade mark as well as on the recent decision of the President of the Commercial Court of Brussels prohibiting the further use of the packaging of the ICE Watch at the request of Lego. ECTA Members can find all speaker s presentations on www.ecta.eu (Events- Past - Events- Round Tables and Workshops). 7