Growing Union Changing face of the Hague Agreement Tyrone Berger Monash University European Policy for Intellectual Property Association (EPIP) 11th Annual Conference 3-5 September 2016, Pembroke College, University of Oxford

International designs Series of agreements - London 1934, Hague 1960, Geneva 1999 Designs least harmonised of IP rights… real flexibility Variety of protections ‘cumulative’ Hague Agreement does not provide harmonised standards … but evidences an effort to ‘internationalise’ designs Entitlement: ‘Connection’ or Art 3 “domicile, a habitual residence or have a real and effective industrial or commercial establishment in the territory of a Contracting Party”

Hague registration process Direct/Paris Route The Hague System

Policy objectives Improve filing international designs Minimise change to national laws Leading scholar William T Fryer III (2007): “It was formed to integrate the national systems, to facilitate foreign design protection, a necessary step toward global design law harmonisation”

Other features National application not required 3 sets of fees: basic, designation, publication Various terms of protection

A note about ‘declarations’ Mandatory and optional declarations Two types of systems: non-examining and examining Eg individual designation fees (Art 7(2)) Countries will approach the Hague Agreement in different ways

Growing Union 34 Contracting Parties to Hague Act 1960 51 Contracting Parties to Geneva Act 1999 Total 65 members (re-signs) Recent accession: US, Japan, Rep of Korea Upcoming: UK, Canada - others?

Growing Union

Designs applications & counts Hague Yearly Review (HYR) Continuous growth since 2007 (applications/counts) – 2014? According to WIPO – “partially due to the expansion in membership of the Hague System” 2014: 4.9 designs per application

Designs applications & counts

Designations

Recent national experiences HYR reports on top 5 countries (EU, CH, DE, FR, TR) Acceded to Geneva Act 1999 (2010-2015) – ‘effect of accession’ Finland, Germany (re-signed), Japan, Norway, Republic of Korea, United States Significant increases designations/design counts Korea & US – large companies (eg Samsung 435 designs, 62% US Hague applic by P&G, Gillette & Microsoft) Policy implications?

Applications by selected CP (2010-2015)

Designations of selected CPs (2010-2015)

Fees – ‘direct v Hague’ Convergence of costs where an application has more designations, subject to mix of countries Not an accurate measure by itself – professional fees (eg resident requirement), potential translation costs Individual designation fees eg EU 67, Japan 582, US up to 1273 (all swiss francs!)

Who collects the fees? Basic and publication fees are retained by the IB Only the designation fee is forwarded to the Contracting Party Publication fee due prior to deferment period expires (up to 30 months) Increased applications => IB revenue

Concluding remarks Growing Union – more attractive? Robust IP laws ≠ certainty, less harmonisation WIPO’s 2016/17 Program & Budget Program 31 ‘expand geographical scope’ => target 60 Contracting Parties Further research!!

Changing face?

Contact: tyrone.berger@monash.edu Thank you! Contact: tyrone.berger@monash.edu @tyrone_berger