UK joins the Hague Agreement for industrial designs
On 13 June 2018, the UK officially became an individual contracting member of the Hague Agreement, meaning that it is now possible to designate the UK and obtain registered design protection in the UK directly via the Hague System. Previously, it was only possible to obtain protection in the UK through the Hague System by designating the EU.
This is good news for designers, who are now able to use the Hague System to secure design protection in the UK directly, and can still seek design protection in the UK after the UK leaves the EU in March 2019.
What is the Hague System?
The Hague System is administered by the World Intellectual Property Organisation (WIPO) and provides a cost-effective way to secure international registered design protection in the countries that are signed up to the agreement. At present, there are 68 contracting parties (shown here) covering 84 countries, including the UK, US, Japan, Russia and all EU member states. More countries, such as China and Canada, are set to join in the near future.
Who can use the Hague System?
The Hague System is available to those that are a national of, domiciled in or have a real and effective industrial or commercial establishment in a Hague Agreement contracting country.
What can be protected?
The design (appearance) of almost any product, graphic symbol, graphical user interface (GUI) or logo. An international application can cover up to 100 different designs, provided that the designs all fall under the same class of the Locarno Classification (i.e. the designs all relate to similar products).
What is the procedure?
- A single international registered design application is filed with the International Bureau of the WIPO.
- The WIPO only checks that the formal requirements are met – there is no search or substantive examination to check the novelty or individual character of a design.
- Substantive examination is carried out only in those countries where this is a requirement (e.g. in the US).
- The WIPO registers the design(s) centrally if there are no objections from the offices in the designated countries, or once any objections have been overcome.
How long does an international design registration last?
An international design registration provides an initial 5 year term of protection from the filing date. A single renewal fee can be paid every 5 years to renew the registration for a total of at least 15 years. The term of protection may be longer when permitted by national law (e.g. 25 years for the UK or the EU). The maximum term of protection for each contracting party can be found here.
What are the benefits of using the Hague System?
- A single international design registration and set of fees covers any or all of the Hague Agreement contracting countries – more cost-effective than filing separate design applications in each country.
- One renewal fee to renew the international registration – as opposed to separate renewal fees in each country.
- No need to prepare translations – just one language required for an international application: English, French or Spanish.
- The Hague System minimises the risk of running into formalities objections (and the associated costs) since it is not possible for national offices to object to an international design application for formal reasons.
- The Hague System now enables designs to be protected in the UK and the EU via a single international registration, even after the UK leaves the EU.
If you are interested in filing an international design application, or would like any further information, please do not hesitate to contact us.
Dan Rusby-Gale & James Farrow