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					                  Introduction to the International
                   Protection of Industrial Designs
                       under the Hague Agreement

                                                Grégoire Bisson
                                                          Head
               International Registration Systems Legal Section
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                                                 World
                                           Intellectual
                                              Property
                                          Organization
                            What is the Hague Agreement?


               • A procedural filing system for the international
                 registration and protection of industrial designs,
                 administered by the International Bureau of WIPO in
                 Geneva (Switzerland).

               • Registration and Administration of Industrial
                 Designs in Contracting Parties by means of:
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                  – a single procedure
                  – with a single administration
                  – in one language
                  – on payment of a fee in a single currency
                                  Direct filing vs the Hague Route


                      Direct                             Hague

               •   file in many Offices            •   file in one Office of origin
               •   follow different requirements   •   one set of requirements
               •   fees in many local currencies   •   fees in one currency
               •   usually local agent             •   foreign agent only if refused
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               •   many registrations              •   one international registration
               •   many renewals                   •   one renewal
               •   changes recorded via            •   changes recorded via the
                   each national office                the International Bureau

               Multiple Procedures                     One Single Procedure
                      Objectives of the Hague Agreement


               Since the Hague System is primarily a procedural
               arrangement, it does not determine:

                 the conditions for protection;
                 the refusal procedure to be applied when deciding
                 whether a design may be protected; or
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                 the rights which result from protection.

               Such issues are governed by the law of each
               Contracting Party designated in an international
               registration.
                  Components of the Hague Agreement

               The Hague Agreement was adopted in 1925 and entered
               into force in June 1928, and now comprises 3 Acts:

                  – the 1934 Act
                  – the 1960 Act
                  – the 1999 Act

               The Common Regulations and Administrative Instructions
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               National/regional laws
                                                    13 October 2006

                      Hague Union Members (44)
                                              (by most recent act)
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                                    20 Geneva Act (1999)
                                    21 Hague Act (1960)
               By Most Recent Act
                                     3 London Act (1934)
                                                                    13 October 2006

                               Hague Union Members (44)
                                                             (by most recent act)



               50

               40

               30

               20

               10
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               0
                    1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006
               99    -    -    -    -    -    -    -    -      11   15    18   20
               60   19    20   23   23   24   24   24   25     21   21    21   21
               34    6    6    6    6    5    5    5    5      4     3    3     3
                                         Topics Addressed:

               • Filing procedure

               • Contents of the application

               • Requirements relating to reproductions

               • Timing of publication
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               • Examination work by the IB

               • Management of the international registration
                                              Filing procedure
               How to file?

               • Directly with the International Bureau
               • First national filing not required
               • Official application form in English or French
               • No need to appoint a representative with IB
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               • Need to be “entitled” to apply
                     •   establishment
                     •   domicile
                     •   nationality
                     •   habitual residence
                           … in at least one Contracting Party
                                        The Application Form
               www.wipo.int/edocs/formdocs/form-hague/en/form_dm_1.pdf
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               Mandatory Contents of the Application
                              Designation of Contracting Parties
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               Mandatory Contents of the Application
                     Entitlement & Designation of Contracting Parties
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               Mandatory Contents of the Application
                             Indication of the Designs Deposited
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               MAX = 100    SAME CLASS
               DESIGNS      OF LOCARNO
                                     Filing of Reproductions
                Article 5(1), Rule 9, Administrative Instructions S. 401-405

               • No requirements on views, number nor
                 type

               • Requirements concern :
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                 – Contents
                 – Quality
                 – Physical Presentation
                           Filing of Reproductions (1/2)

               • Contents
                 – Deposited design or product alone
                 – Plain and neutral background        A
                 – Technical drawings not allowed
                                                       A’

               • Quality
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                 – Photographs / drawings /CAD
                 – Colour or B&W
                 – Aim : publication in the Bulletin


               • Reminder : no refusal on formal grounds
               Acceptable Reproductions
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                       Filing of Reproductions (2/2)




               • Physical Presentation

                 – Highly regulated issue, pragmatically enforced
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                 – Hard copies required

                 – Impact on the fees
                                                                  Fees
               • Basic Fee covering the expenses of dealing with the
                 application by the International Bureau :
                  – 397 plus 19/additional design


               • Publication fees, covering the expenses of the IB :
                  – 12/BW image or 75/color image
                            Tip : page submitted
                  – 150/additionalUse Fee Calculator
                            http://www.wipo.int/hague/en/
               • State fees, for each designation of a Contracting Party
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                  – 42 plus 2/additional design OR
                  – State Novelty examination fee lower than national fees


               • Description fee, covering translation costs of the IB
                  – 2/additional word over 100
                         Fees
               The Fee calculator
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                                                            Fees
                                                Payment of the Fees

               • Direct to the International Bureau

               • In Swiss Francs

               • Different modes of payment
                 – Through a current account opened with the IB
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                 – Bank transfer
                 – Check
                 Optional Contents of the Application
               Elements with an * may be required by certain designated CPs

                    • Priority claim under Article 4 PC

                    • Declaration under Art. 11 PC


                    • Description, Claim or Disclaimer*
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                    • Identity of the Creator*


                    • Statement that Applicant is the creator*
               Optional Contents of the Application
                                          Appointment of a Representative

               • Not subjected to any conditions
                    • no territorial constraints
                    • no title nor qualifications required


               • Effects of appointment
                    •   all Office actions addressed to the representative
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                    •   all requests may be made by the representative
                    •   Can be changed at any time in life of registration
                    •   Different from representative that may have to be
                        appointed before a refusing office
               Optional contents of the Application
                     Requesting Immediate Publication or Deferment
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               Optional Contents of the Application
                                       Requesting deferred publication


               • Reasons to request deferment

                  – Commercial strategic reasons

                  – Pay publication fee at end of deferment
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                  – Reduce publication fee through cancellation
                    (textile industry)
                    The Role of the
               International Bureau
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                                        Formal Examination


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

               WIPO does not appraise in any way the novelty
               of the designs and therefore it is not entitled to
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               reject an international application on this
               ground.
                   Formal Examination by the IB (1/2)


               • Application complete and in order?
                   • compulsory requirements are all there and correctly
                     indicated or presented
                   • optional elements are correctly indicated
                   • unauthorized elements are excluded


               • Irregular application
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                   • 3 months from notice to correct the deficiencies
                   • application deemed abandoned if not corrected
                   • if corrected, most deficiencies do not affect the IRD
                    Formal Examination by the IB (2/2)


               • Irregularities affecting the IFD :

                    •   Identity of the applicant
                    •   Entitlement of the applicant
                    •   Reproductions of the ID(s)
                    •   Designation of at least one CP
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               • Irregularities affecting the IRD
                    • Concern elements required by certain designated CPs
                                                      Publication


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



               Publication of in the Bulletin takes the place of
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               national publication.
                        The Role of the Office of a
               Designated Contracting Party under
                           The Hague Agreement
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                                      Declarations under the 1999 Act
                    that concern the designation of a Contracting Party


               •   Art.5(2) - Description/Claim/Identity of creator required
               •   Art.7(2) - Individual fee in respect of a designation or a Renewal
               •   Art.11(1)(a) - Deferment of publ. for a period less than 30 months
               •   Art.11(1)(b) - No deferment of publ.
               •   Art.13(1) - Requirement of unity of design
               •   Art.14(3) - Prohibition of self-designation
               •   Art.16(2) - No effect of change in ownership until specified docs. are
                                 received by the Office
               •   Rule 6(3)(ii) - Language of the communication
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               •   Rule 8(1) - Special requirements concerning the applicant
               •   Rule 9(3)(a) - Certain views of the design required
               •   Rule 13(4) - Security clearance
               •   Rule 18(1)(b) - extended period of refusal
               •   Rule 18(1)(c ) - delayed starting date of effect as a registration
                            Office of a Designated CP


               • No specific examination required
                 – Office relieved from formal examination
                 – substantive examination : same as for
                   applications filed under national law
                 – If novelty examination, then is considered an
                   “examining Office” under the System
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               • Starts with notification through the
                 International Designs Bulletin
Hague System   Examination
Hague System   Examination
                                                             Examination
               Loading International Registrations into the national database




                     • All data files extracted from the International Register as
                       part of the regular automated procedures are disseminated
                       via the internet, absolutely free of charge and includes both
                       bibliographic and image data

                     • The format of the data is XML (eXstensible Markup
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                       Language)

                     • ftp://ftpird.wipo.int/wipo/hague
                                            Refusals - Procedure

               • Notification addressed to the IB
                 –   Examined by IB and forwarded to holder
                 –   Ensuing procedure devolves under national law
                 –   Withdrawal may be further notified
                 –   Grant of protection may be issued


               • Examination by the IB (Rules 18 & 20)
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                 – Time limit respected
                 – Mandatory contents
                                                               Refusals


               • As to the time frame :
                 – For “examining office” or if opposition procedure
                    • Time limit may be extended to 12 months*



               • As to the grounds
                 – Principle : substantive grounds only
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                 – Exceptions :
                    • insufficient disclosure of the design
                    • specific views of the design not furnished*
                    • requirement as to unity of design*

                 * Declaration required
                              Effects of the Int’l Registration

               • effect of an application from the date of the IR

               • if no refusal is notified : effect as registration
                 at the latest from the expiry date of the refusal
                 period
                  – could be postponed to up to 6 months after 12-month
                    refusal period *
                  – even after, where a decision regarding the grant of
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                    protection was unintentionally not communicated *


               • if refusal is withdrawn : effect as registration
                 at the latest from the date of withdrawal
                       *For “examining office” or if opposition procedure
                Invalidation of the Int’l Registration


               • By a competent authority of the CP

               • Holder should have been given the
                 opportunity of defending his rights

               • Office, if aware of the invalidation, notifies IB
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               • Invalidation recorded in the International
                 Register and only affects that CP
                                                Distribution of Fees



               • Designation fee for each designation of a
                 Contracting Party (42 SF for the first design and
                 2 SF for each additional design). Remitted in full
                 to each Contracting Party concerned or
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               • Individual Designation Fee*
                  – Also for renewal
                  – May be made payable in two parts

                 * subject to declaration and for CPs with an “examining office” only
               Management of International
                              Registration
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                 Centralized and Streamlined Procedures


               • Renewal
               • Change in Ownership

               • Change of Name or Address

               • Renunciation, Limitation and
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                 Cancellation
                                       Management
                                    Types of Recordings

                         All industrial designs
               Total
                         All Contracting Parties


                         Some industrial designs
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               Partial
                         Some Contracting Parties
                                                 Management
                                                           Renewal


               • Every 5 years from IR date
               • If the domestic legislation of a Contracting Party
                 allows a term of protection of more than 10 or 15
                 years for national registrations, then the
                 international registration may be renewed in
                 respect of that Contracting Party for additional
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                 periods of 5 years, up to the expiry of the total
                 term of protection allowed for such national
                 registrations.
               • Notice of expiry sent to both holder
                 and representative
                                             Thank You
                                                Grégoire Bisson
                                                          Head
               International Registration Systems Legal Section
                                         intreg.mail@wipo.int
Hague System




                                             World
                                       Intellectual
                                          Property
                                      Organization

				
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