World Intellectual Property Organization The 1999 Geneva Act of the Hague System for the International Registration of Industrial Designs WIPO National Seminar on Industrial Property and on the Implementation of the TRIPS’ Obligations in the Pursuance of National Public Policies and Goals Damascus, May 28 and 29, 2008 Päivi Lähdesmäki, WIPO

Why Geneva (’99) Act? States English/French Refusal 6 months Special requirements not possible Deferment up to 12 months. 10 years minimum duration States + Organisations English/French 6 or 12 months option e.g. – Identity of creator - Brief description - Claim Deferment up to 30 months 15 years minimum

Preparing an International Application: 1.Entitlement to file an International Application 2.Languages 3.Representation before the International Bureau

1. Entitlement to file an International Application

Who May File an Application ? Article 3 of the 1999 Act: Closed system: nationality nationality domicile domicile real and effective industrial or commercial establishment real and effective industrial or commercial establishment habitual residence habitual residence

Which Act Will Govern the Application ? Article 31(1) of the 1960 Act and of the 1999 Act: The latest Act shall apply: as regards the mutual relations of States party to the 1934 Act / the 1960 Act / the 1999 Act

1934 / 1960 / Act Several Contracting Parties may be designated. An international application may be governed by more than one Act Several Contracting Parties may be designated. An international application may be governed by more than one Act. Designations of Contracting Parties 1934 / 1960 / Act 1999 Act

Act 1934 / 1960 / 1999 The European Community is one Contracting Party, which is independent of its member states The European Community is one Contracting Party, which is independent of its member states Act Not possible Designations of Contracting Parties

As an EU member 1999 Act 1999 All member states of the European Union may enjoy the 1999 Act All member states of the European Union may enjoy the 1999 Act / 1960 / Act 1999 Designations of Contracting Parties

As an EU member 1999 Act 1934 / Cumulative status: again, the latest Act shall apply Cumulative status: again, the latest Act shall apply Act 1934 / Act Designations of Contracting Parties

Several Applicants Two or more applicants may jointly file an application ! Provided that each of them has an entitlement through a Contracting Party or Parties bound by the same Act or Acts Provided that each of them has an entitlement through a Contracting Party or Parties bound by the same Act or Acts.

As an EU member 1999 Act / 1960 Co-applicants A and B Act Act Several Applicants BA 1934 / 1960 / 1999

2. Languages

Languages (Rule 6) English and French FilingFiling CommunicationsCommunications Recording and PublicationRecording and Publication

Language of Filing Rule 6(1) and Rule 14(2)(a): English or French Attention: if filed trough the Office, it may restrict the choice of the language. Art.4(1)(a) of the 1999 Act: An international application may be filed through the Office of the State of Origin if that Office so permits.

Language of Communication Rule 6(3): English or FrenchTo the International Bureau (from an Office or applicant / holder): English or French The language of applicationPrinciple: from the International Bureau (to an Office or applicant / holder): The language of application

3. Representation before the International Bureau

Representation (Rule 3) Before the International Bureau.Before the International Bureau. Not compulsoryNot compulsory No provision regarding competence or qualificationNo provision regarding competence or qualification No provision regarding geographical locationNo provision regarding geographical location

Appointment of a Representative Rule 3(1) and (2): Must be signedMust be signed by the applicant or holder Only one representative

How to Appoint? Rule 3(2): international applicationIn an international application request for the recording of a changeIn a request for the recording of a change (change in the ownership, change in the name and/or address of the holder etc.) separate communicationIn a separate communication (form DM/7 may be used)

Cancellation of Appointment Rule 3(5): May be requested by the applicant or holder, or the representative Ex officio by the International Bureau on appointment of a new representative, or in the case of a change in ownership. No fee payable on appointment, change or cancellation of representative.

How to Fill in the Application Form DM/1 ? Some main features

Contents of the International Application: Compulsory requirements : Identity of the applicant Entitlement of the applicant (nationality, domicile, establishment, habitual residence) Reproductions of the industrial designs Designation of the articles (Locarno classification optional) Designated Contracting Parties Fees paid

Contents of the International Application (cont.): A single international application may comprise several different designs (“multiple deposit”), up to a maximum of 100. All the designs must belong to same class of Locarno classification- i.e., ‘monoclass’ application. Must contain, inter alia, a reproduction of the designs, along with the designation of the Contracting Parties where protection is sought

Reproductions (Administrative Instructions: Part 4) 1)Contents 2)Quality 3)Physical presentation

1)Contents Deposited design or article alone dotted or broken lines Plain and neutral background 3 cm minimum (subject matter) Technical drawings not allowed

2)Quality Photographs / drawings Colour or Black & White Aim : publication

3)Physical presentation pasted or printed onto a sheet of white and opaque A4 paper numbering (1.1, 1.2, … ; 2.1, 2.2…) maximum size is 16x16 cm edges cut at right angle «right-angled» free of any foreign element 5mm margin around each reproduction ascending numerical order sheet used upright

A A’ X

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  X X

Correcting Irregularities Give us our references (number and initials) Mind a possible impact on the publication fees: savings or extra cost? Base yourself on what was accepted Do not file a new application (except if divisional) New reproductions should not be loose nor bent New reproductions are required, not new representations... X 

“… new reproductions are required, not new representations” 21/11/03 15/12/03

Deferment of Publication 1999 Act - up to 30 months (from the filing date or from the priority date)

Requesting Immediate Publication or Deferment

Costs of an application: Payable Fees –Basic fee : 397 CHF + 19 CHF / additional design –Standard designation fee : level one: 42 CHF + 2 CHF / additional design level two: 60 CHF + 20 CHF / additional design level three: 90 CHF + 50 CHF / additional design or –Individual fee : see schedule of fees –Publication fee : 17 CHF CHF / additional page

Designation Fees (Individual) Tip : Use Fee Calculator

The Hague Website Information about Members Information Notices Forms / e-filing/ Fee Calculator Electronic Guide and Legal Texts Databases Possibility to subscribe to newsletter (near future – Country Info. Sheets)

Thank You Päivi Lähdesmäki Senior Legal Officer International Registration Systems Legal Service World Intellectual Property Organization