Hague System for the International Registration of Industrial Designs Alan Datri

BASICS

Centralization The centralized acquisition, maintenance and management of industrial design rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated. Allows right holders to target national, regional or global markets with respect to particular goods. Cost-effective and efficient (at the front and back ends), thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large. Enhanced by various on-line services on the Hague system pages of the WIPO website: e-filing; e-payment; e-renewal, etc.

Applicant Territory A Territory B Territory C Applicant Territory A Territory B Territory C Office A Office B Office C Centralization National/Regional Route International Route

Hague System Today 46 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 61 Contracting Parties December 24, 2013

Hague System Tomorrow? 53 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 68 Contracting Parties 2014 – 2016?

Interesting Times “Complexification” With the arrival of the examination systems (Korea, US, Japan, China), it will not longer be a one-size-fits- all system. Jumpstarting Harmonization Possible design law treaty resulting from the work of the SCT Advocating “best practices” among offices “Intelligent” electronic tools to navigate the differences

Declarations under the Geneva Act Prohibition on filing through Office and/or self designation Required views (< 6/1) Special Requirements regarding applicant or creator Additional Mandatory Requirements: (i) indications of identity of creator; (ii) brief description and/or (iii) claim Fee structure: standard designation (3) or individual Security clearance Deferred publication less than 30 months or no deferment Time for notifying refusal and commencement of grant of protection Unity of design Effect of change in ownership Maximum duration of protection

Putting Things in Perspective Simple in concept Accommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right Can be complex in implementation and use Not surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems Practitioners, Practitioners, Practitioners Proper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel

INTERNATIONAL LEGAL FRAMEWORK

Hague System for the International Registration of Industrial Designs Hague Agreement London Act (1934) “Frozen” as of 1 Jan 2010 Hague Act (1960) Primarily European Geneva Act (1999) Entered into force on 23 Dec 2003 Operational on 1 Apr 2004 Treaty of the future Common Regulations (1996) Last revised: 1 Jan 2014 common definitions differentiates requirements Admin. Instructions (2002) Last revised: 1 Jan 2014 National Laws & Regulations

Closed System Entitlement Must have a connection with a Contracting Party of a treaty Real and Effective Industrial or Commercial Establishment (“Establishment”) Domicile Habitual Residence Nationality Extension of Protection Can only designate Contracting Party with a common treaty

Registration OFFICE OF DESIGNATED CONTRACTING PARTY SUBSTANTIVE EXAMINATION International Application FORMALITIES EXAMINATION International Register Certificate of International Registration Publication (immediate; standard; deferred) OFFICE OF APPLICANT’S CONTRACTING PARTY SECURITY CLEARANCE OFFICE OF DESIGNATED CONTRACTING PARTY INTERNATIONAL BUREAU Designations Self-Designation Indirect Filing Direct Filing

Maintenance and Management Renewal (5 years) – DM/4 Appointment of a representative – DM/7 Change of name and address or holder or representative – DM/6 Record transfer of ownership – DM/2 Statements or documents may be required Limitation of designs in one or more DCPs – DM/3 Renunciation of all designs in one or more DCPs – DM/5

International Registration: Effects As a national/regional application As of the date of the international registration As a grant of protection No Refusal Date of expiry of refusal period (6 or 12 months), at the latest,* but can be later (if “examining Office” or opposition) Date of optional statement of grant of protection prior to expiration of refusal period Refusal If overcome, date of withdrawal/statement of grant of protection, at the latest* * “At the latest”: grant could be earlier, e.g., date of international registration

International Registration: Duration Initially valid for 5 years from date of international registration Minimum duration of protection set by governing treaty 3 x 5-year term = 15 years Maximum duration of protection set by national/regional law of each DCP 6 months before the expiration of a 5-year term, the IB unofficially notifies holder of the maximum duration of protection in each DCP

FILING

n/forms/

10 DESIGNATED CONTRACTING PARTIES DECLARATIONS ! i

78 REPRODUCTIONS OF DESIGNS LOCARNO CLASS and SUB-CLASS(ES) (if latter known)

Reproductions: General Requirements Mode Photographs or graphic reproductions B&W or color Requirements Industrial design alone at the exclusion of all else Against a neutral/plain background Technical drawings, particularly those showing axes, dimensions, explanatory text or legends unacceptable May include shading and hatching Dotted or broken lines or the text of the description may depict matter not claimed

Reproductions: Published in Bulletin

USE

2014 Hague Yearly Review Highlights Summary of System Use of Hague System Administrative Procedures, Revenue and Fees Relevant Developments in Membership and Legal Framework Annexes

2013 Key Figures DESCRIPTIONNUMBERGROWTH NUMBERGROWTH INTERNATIONAL APPLICATIONS 2, %13, % INTERNATIOAL REGISTRATIONS 2, %12, % DESIGNATIONS IN INT. REGISTRATIONS 15, %65, % INTERNATIONAL REGISTRATIONS IN FORCE 26, %111, % Applications/Registrations Designs Contained in Applications/Registrations

ADDITIONAL INFORMATION

Self-Study Hague Yearly Review, International Registration of Industrial Designs (930E/14) Objectives, Main Features, Advantages of the Hague System (911) DM/1 - International Application DM/1.inf - Explanatory Notes to DM/1 Guide to the International Registration of Industrial Designs under the Hague Agreement Legal Texts - Geneva Act (1999); Common Regulations; Administrative Instructions

/ E-Filing: Video Tutorials

ALAN DATRI Memphis, TN Washington, DC (901) (202)