Study Visit to WIPO by Graduate Students from Hongik University, Republic of Korea An Overview on the Registration of Designs under the Hague System Betty Berendson Senior Information Officer Information and Promotion Section The Hague Registry Geneva February 12, 2013

Contents Added value of industrial designs Why protect designs? Background – What is the Hague System? Key Principles and Characteristics Geographical Scope of the Hague System – Going Global Main Advantages Some Statistics Information and IT Tools

Added Value of Industrial Designs

Design sells!

The Swatch Collection -Same brand -Same technology -Same price -1,000’s of registered designs

Design drives consumers’ choice “Case studies clearly demonstrate that … people are willing to pay more for the well-designed product or packaging solely based on appeal.” Virginia Postrel, The Age of Look and Feel, Harper Collins, 2003

Why Protect Designs?

Design is an Asset Good design is a creative process Research and development for design is needed Research and development is an investment The outcome (design) is an asset Assets need to be protected

One More Reason to Protect Designs Designs are about the look The look is easy to copy !

Why is it important to Register a Design? Copyright or unfair competition may not be available « Registered design » titles allow for: Cease and desist letters IP brigade crack-downs Interlocutory injunctions Custom seizure

Registration Rights Are Territorial Each registration is limited to the territory of the jurisdiction Market in many jurisdictions = getting a title for each company Market A Market B Market C IP Office A IP Office B IP Office C

The Hurdle to International Protection Multiple filings are expensive and cumbersome many Offices for filing many languages many formalitiesone language many currenciesone currency many registrationsone int. registration many renewalsone renewal many modifications one modification many foreign attorneys or agentsforeign attorney or agent (needed only if refused)

Background - What is the Hague System?

The Hague System: a cost- effective way to protect industrial designs internationally

The Hague System is… A procedural agreement for the centralized acquisition and maintenance of industrial design rights for the filing of an industrial design « internationally" (in Contracting Parties to the Hague Agreement) It provides a mechanism for the central management (post- registration)

One to Many Relationship File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated “Bundle of Rights” If no refusal is issued, the resulting international registration has the effect of a grant of protection in each designated Contracting Party The Hague System is…

Formal Examination by IB IB examines formalities only Substantive grounds, such as novelty, not considered by the International Bureau Recording in the International Register Registration certificate sent to holder Publication in WIPO International Designs Bulletin Immediate publication at applicant’s request Deferred publication and payment of related fees at applicant’s request

Substantive Examination by Designated Contracting Party Substantive examination, if any, undertaken by the Office of a designated Contracting Party as provided by its national law Refusal must be sent to the IB within the set time limits from the date of publication of the international registration Holder has same remedies as would have been available if filed as a national application If not refused, or if refusal withdrawn, the IR produces the same effect as a grant of protection under the national law

Key Principles

No need for a basic application/registration Designation of the Contracting Party of the holder possible Most international applications are filed directly with the International Bureau (not via an Office) E-filing and e-renewal available Subsequent designation is NOT possible

Who can use the Hague system? Hague System = closed system: ● Entitlement to file an international application: the applicant needs a connection with a CPs via nationality, domicile, real and effective industrial or commercial establishment or habitual residence (Geneva Act only) ● Only CPs may be designated

Geographical Scope of the Hague System – Going Global

Hague Union 45 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 60 Contracting Parties

Recent Accessions to the Geneva Act Tunisia (June 13, 2012) Tajikistan (March 21, 2012) Montenegro (March 5, 2012) Rwanda (August 31, 2011) Monaco (June 9, 2011) Finland (May 1 st, 2011)

Potential accessions to the Geneva Act Korea (announced for 2013) USA (the Implementing Bill has already been signed) China Japan Russian Federation Morocco ASEAN Countries (announced for 2015) Trinidad and Tobago Barbados Brunei Madagascar

Main Advantages of the Hague System

Hague System is… Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget Flexible, affording right holders great flexibility in targeting national, regional or global markets for particular goods

When Filing ●ONE international application ●ONE international registration for all the designs included in the application ●In ONE language (English/French/Spanish) ●Payment of ONE set of fees ● Payment in ONE currency (= Swiss francs) ● Filed with ONE office (International Bureau - WIPO)

Central Management ONE request filed within the International Bureau in case of: ● Change in ownership ● Change in the name or address of the holder ● Renunciation ● Limitation ONE renewal request (e-renewal since )

Advantages of the Geneva Act Accession opened to certain intergovernmental organizations (currently the EU and OAPI); Facilitates accession for countries whose legislation foresee novelty examination; Entitlement also on the basis of habitual residence; Maximum deferment period of 30 months; Minimum duration of protection of 15 years (5+5+5); Larger geographical scope; Timeframe of six months to notify a refusal may be replaced by 12 months (Offices that carry out substantive examination or whose legislation foresee opposition).

Hague System / E-Filing Very useful and user-friendly IT tool More than 80% of the international applications are currently filed through the e-filing interface The e-filing interface is available on the WIPO website

Hague System / E-Renewal The e-renewal interface, introduced in January 2011, is a successful IT tool More than 60% of the international registrations are currently renewed through the e-renewal interface The e-renewal interface is available on the WIPO website ?lang=EN

Some Statistics

International Registrations Recorded ( )

Designs Recorded in

Amounts of Fees paid per International Registration (2011)

International Registrations in force up to December 31 st, 2011)

2011: Top Filing Contracting Parties Contracting Party of entitlement (through establishment, domicile, nationality or habitual residence): 1.European Union (4,462 designs, 37.1%) 2.Switzerland (4,230 designs, 35.2%) 3.Germany (1,370 designs, 11.4%) 4.France (955 designs, 7.9%) 5.Turkey (243 designs, 2%) 6.Spain(124 designs, 1%) 7.Norway(104 designs, 0.9%) 8.Croatia(95 designs, 0.8%) 9.Liechtenstein(87 designs, 0.7%) 10.Finland(73 designs, 0.6%)

Number of designs recorded: 1. European Union (8,440 designs, 76.2%) 2. Switzerland(7,593 designs, 68.5%) 3. Turkey(4,631 designs, 41.8%) 4. Ukraine (2,550 designs, 23%) 5. Singapore (2,448 designs, 22.1%) 6. Norway(2,054 designs, 18.5%) 7. Croatia(2,036 designs, 18.4%) 8. Morocco (1,833 designs, 16.5%) 9. Monaco(1,528 designs, 13.8%) 10. Egypt(1,449 designs, 13.1%) 2011: Most Designated Contracting Parties

Information and IT tools

New E-filing Platform A new e-filing platform available will include following improvements: a WIPO User account facilitated downloading of reproductions automatic check and transformation of images integrated fee calculator payment of fees by credit card

Hague Portfolio Manager (HPM) The HPM will enable access to data uploaded to the user account, such as the bibliographic data of the holder and a portfolio of international applications and registrations, It will allow as well for interaction between the holder and the International Bureau. The HPM will also make it possible to manage portfolios by allowing for the submission to the International Bureau of requests for the recording of modifications through an electronic interface related to a user account.

Thank you!