1

General Overview of the Hague System

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Purpose of the the Hague Agreement

• The Hague Agreement is an international registration system which offers the possibility of requesting protection for industrial designs in several countries, by means of a single international application filed with the International Bureau of WIPO.

• Under the Hague system, therefore, a single international application replaces a whole series of national applications which, otherwise, should have been effected at the national level with different national Offices.

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The Hague Agreement

• Participation of a Contracting Party to the Hague system may be achieved through an accession:

– to the 1934 Act, and/or– to the 1960 Act, and/or– to the 1999 Act

• The 1999 Act entered into force on December 2003 and comprises 19 countries at present.

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Why the Geneva (1999) Act of The Hague Agreement?

The Geneva Act of 1999 has a twofold objective, namely:

• On the one hand, to extend the Hague system to new members; to do that, the Geneva Act has introduced a certain number of features into the Hague system with a view to allowing or facilitating the accession of new Contracting Parties.

• On the other hand, to provide for the establishment of a link between the international registration system and regional systems, by providing that intergovernmental organizations may become party to the Act.

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Hague Membership (42)

Geneva Act (1999) Hague Act (1960) London Act (1934)

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Hague Union Members (42)

Grouped according to the most recent Actof which each State is Member

Geneva Act (1999): Croatia, Egypt, Estonia, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Namibia, Republic of Moldova, Romania, Singapore, Slovenia, Spain, Switzerland, The former Y.R. of Macedonia, Turkey, Ukraine (19)

Hague Act (1960): Belgium, Belize, Benin, Bulgaria,Côte d’Ivoire, D.P.R. of Korea, France, Gabon, Germany, Greece, Italy, Luxembourg, Monaco, Mongolia, Morocco, Netherlands, Niger, Senegal, Serbia and Montenegro, Suriname (20)

London Act (1934): Holy See, Indonesia, Tunisia (3)

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Basic features of the Hague System (1)

Closed system:1) Entitlement to use the Hague System: need of an

entitlement with a Contracting Party– either nationality– or domicile– or habitual residence– or real and effective industrial or commercial establishment.

2) Only Contracting Parties bound by the Hague Agreement may be designated. (Protection in third countries may be obtained only by way of national or regional applications filed individually with the Office of each country in question).

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Basic features of the Hague System (2)

• An international application does not require any prior national deposit. A design may be deposited and protected for the first time at the international level through the Hague Agreement.

• An international application is normally sent directly to the International Bureau of WIPO by the applicant.

• An international application may be filed in either English or French (at the applicant’s choice).

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Contents of the International Application

• A single international application may comprise several different designs (“multiple application”), up to a maximum of 100

• All designs included in an application must belong to the same class of the international classification of Locarno : the international application is therefore “monoclass”

• The international application must contain, inter alia, a reproduction of the designs together with the designation of Contracting Parties where protection is sought.

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Cost of an International Application

An international application is the subject of three sets of fees:

– a basic fee (397 CHF for the first design and 19 CHF for each additional design);

– a publication fee (12 or 75 CHF, depending on whether the reproduction is in black and white or in colour);

– a designation fee for each designated Contracting Party (42 CHF for the first design and 2 CHF for each additional design) OR an “Individual Fee”

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Examination as to the form by the International Bureau

• When the International Bureau receives an international application, it checks that it complies with the prescribed formal requirements.

• Being solely a formal examination, the International Bureau of WIPO does not appraise in any way the novelty of the designs and is therefore not entitled to reject an application on this ground.

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Publication

• An application complying with the prescribed formal requirements is registered by the International Bureau and such registration is published in the International Designs Bulletin.

• This Bulletin is published electronically, on WIPO’s Internet site.

• Publication of registrations in this Bulletin takes the place of national publication

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Examination as to the Substance by each Designated Office: Possibility of Refusal (1)

• Upon publication of the Bulletin, each Office must identify the international registrations in which it is designated in order to proceed to the substantive examination provided for by its own legislation.

• Following such examination. Each Office has the right to refuse protection, in its territory, to an international design, if it does not fulfil the conditions of protection provided for by its national legislation. (However, a refusal may not be based on the ground of non-compliance with formal requirements, since such requirements must be considered as already having been satisfied following the examination carried out by the International Bureau).

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Examination as to the Substance by each Designated Office: Possibility of Refusal (2)

• A refusal of protection must be notified to the International Bureau within six months from the date of publication.

• In the event of refusal, the holder has the same remedies against the decision of refusal as he would have had if he had applied for the design in question directly with the national Office concerned.

• If no refusal is notified within the six month time limit by the Office, it automatically follows that the international registration enjoys protection in the country concerned.

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Protection Governed by Domestic Law

The system of international registration of designs is a purely procedural treaty. It does not

- determine the conditions for protecting a design;

- determine the procedure to be applied in order to decide

whether a design may be protected;- determine the rights which result from protection.

All these questions are governed by the domestic legislation of each designated country.

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Modifications

Changes concerning an international registration (for example: change in ownership, change of name or address of the holder, etc.) may be recorded in the International Bulletin and have effect in all or some only of the designated Contracting Parties, by means of a single request presented to the International Bureau.

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Duration

• International registrations are valid for an initial period of five years. They can be renewed for two additional periods of five years (i.e., a minimum period of protection of 15 years).

• Furthermore, if the domestic legislation of a Contracting Party allows a term of protection of more than 15 years, then the international registration may be renewed in respect of that Contracting Party for additional periods of five years, up to the expiry of the total term of protection allowed for such national registrations.

8.3%

9.6%

10.1%

15%

22.9%

0 50 100 150 200 250 300 350 400

Italy

Benelux

France

Germany

Switzerland

Int. Reg. in 2005 by country of origin

3

0 200 400 600 800 1000 1200

France

Benelux

Germany

Italy

Switzerland

Most designated countries in 2005

4

20

22 % Class 10 : « Measuring Instruments »

21

9 % in Class 6 : « Furnishing »

22

9 % in Class 9 : « Packaging and Containers »

23

7 % in Class 12 : « Means of Transport »

24

6 % in Class 7 : « Household Goods »

25

6 % in Class 23 « Fluid Distribution or Heating Equipment »

26

5 % in Class 11 « Articles of Adornment »

D M /0 5 9 8 3 0 - 9

reto u r / b ack

27

4 % in Class 14 « Recording, communication or information

retrieval equipment » D M /0 5 9 8 3 0 - 9

reto u r / b ack

28

3 % in Classes 2 and 26 « Articles of Clothing » and

« Lighting Apparatus »