1. The Hague System for the International Registration of Industrial Designs Sub-regional seminar organized by the World Intellectual Property Organization in cooperation with the Ministry of Justice of the Republic of Kazakhstan
Astana
December 9, 2016
Päivi Lähdesmäki Head of the Legal Section The Hague Registry World Intellectual Property Organization

2. Hague System

3. How to file an application - Good to know
NO national application is required
It is possible to designate the applicant’s Contracting Party
NO subsequent designation
Declarations made by the CP to be taken into consideration
The filing of the international application does not require any prior national or regional application or registration. Moreover, protection for an industrial design can be asked in the applicant’s contracting party for the first time at the moment of filing with IB
However, no subsequent designation is possible

4. Contents E-filing Interface;
Formal Examination by the International Bureau;
Recording and Publication of the International Registration;
Subsequent Management of the International Registration

5. Where to find the tools?
wipo.int/hague

6. How to file an application
Directly with IB of WIPO
e-filing
Paper (DM/1 form)
Indirectly through the Office of the Contracting Party
Now when we made it clear who can file an application let’s see how it can be done.
Normally an application is sent directly to the International Bureau, though it is also possible to file an application indirectly, through an office.
Application may be on official paper DM/1 form and sent to the IB by mail or by fax and also may be electronic sent through e-filing interface. The filing date shall be the date when IB receives the application. However if it is sent by fax it will only be effective only from the date of the receipt of the original. If an application contains reproductions only in black and white and the original application has been received within 20 days from the date of receipt of fax an international application bears the date on which a fax has been received.
In case of indirect filing of an application and with a condition that the application is governed exclusively by the 1999 Act the filing date is the date on which an application has been received by the Office Provided that it is received by IB within 1 month of that date or within 6 months if the respective Office made a declaration on security clearance

7. Where to find the tools?
wipo.int/hague

8. E-Filing: Main features
File an international design application
Real-time checking of certain formalities;
Fully integrated fee calculator;
Instant acknowledgement of receipt;
Auto-save;
Portfolio of applications already sent or in preparation (workbench)
Templates
Current status of application
Reply to irregularities online (New)
Send corrections to irregularities or defects
Receive and download notifications

9. E-Filing form Real-time checking of certain formalities;
Fully integrated fee calculator;
Instant acknowledgement of receipt;
Auto-save;

10. E-Filing Portfolio Manager

11. Portfolio / Workbench Portfolio Status Manage your applications
Reply to irregularities online
Logging out

12. Filing an international application

13. Filing an international application

14. Filing an international application

15. Filing an international application

16. Filing an international application

17. Filing an international application

18. Filing an international application

19. Filing an international application

20. Hague System Fee Calculator

21. Reply to irregularities online

22. Reply to irregularities online
Action Required – reply to invitations to correct irregularities
No Action Required – to retrieve observations and abandonment letters
Archived – to retrieve previous notifications

23. Reply to irregularities online
Response the text field
Documents in PDF format: define type
Reproductions: indicate the number of the design and reproduction (i.e. 2.3 = design number 2, reproduction number 3)

24. The Role of the International Bureau

25. Formal examination by the IB
Mandatory contents (Rule 7(3))
E-Filing automatically checks that mandatory contents are filled in, such as product indication or data concerning the applicant
Additional mandatory contents (Rule 7(4))
E-Filing «alerts» if additional mandatory content is missing, such as identity of the creator (, where designated CP has made a declaration under Rule 8(1)(a)(i))
Optional contents (Rule 7(5))
If filled in, the IB checks (, such as description)

26. Mandatory contents of an application
Request for international registration
Applicant’s details
Reproductions
Product indication
Indication of the designated CP
Fees
The mandatory contents consist of the information which must be in every international application.
The request should be on the official form and the paper application shall be filled in on the computer or any other typing machine. The handwriting is not acceptable.
The applicant’s details shall be given in full
It shall be accompanied by the at least one reproduction
The product indication should preferably be identified by using terms appearing in the list of goods of the International Classification
At list one designated CP
The fees shall be paid

27. Product indication and Locarno classification
Industrial designs are classified in accordance with the product indication
Class 32-00
Class 09-05
Here we slowly move from the product indication to Locarno classification since the products are classified in accordance with the indication of the product.
There are 2 examples: for the first design the product indication is “ornamentation” and it classified in class 32 of the international classification of industrial designs “Locarno classification” and another example where ornamentation is to be used on the packaging and it is classified in the class 9 where packaging classified.
It shall be noted that depending on the designated contracting party scope of protection of the design can very, and also some of the offices do not provide for the registration of the design in the certain classes, for ex. in the class 32
DM/081718; “Ornamentation”
DM/084887; “Ornamentation for packaging bags”

28. Locarno classification - Mono class
Chair
Dining table
Cabinet
The application for international registration of industrial designs may contains up to 100 designs, In the case of several designs included in the same international application, all those designs must belong to the same class of the Locarno Classification
Sofa
Corner table
DM/083137

29. Locarno classification: Multiple classes
DM/081329
Class 6
Class 26
The indications relating to the class and sub-class are not compulsory and therefore failure to provide them does not result in an irregularity being raised by the International Bureau.  However, if the International Bureau finds that several designs included in the same international application belong to different classes of the Locarno classification, this constitutes an irregularity which will have to be remedied
DM/084440
DM/073710

30. Additional mandatory contents of an application
Creator details and/or Oath of the creator
Description
Claim
As I said earlier, the declarations of the CP shall be taken into account. And such a declaration may required an additional elements to be included in the application in order to be able to designate respective contracting party
Creator details and/or Declaration
Brief description
Claim
Though the CP can make such a declaration only if it is a filing date requirement under their national legislation.

31. Optional contents Creator Description Legend Priority claim
International exhibition
Publication
Even when information concerning the identity of creator or a description is not required for a designation of a CP such elements may nevertheless be included at the applicant’s choice.

32. Example of descriptions to clarify the design and scope of protection:
Dot-dashed broken lines
Descriptions for visually different types of broken lines:
The evenly spaced broken lines illustrate the portions of the vehicle tire that form no part of the claimed design;
The dot-dashed broken lines indicate the boundaries of the claimed design and form no part of the claimed design.
Evenly spaced broken lines
DM/088295: Vehicle tire

33. Description - Disclaimer
Design 1: the handle and the key hole, shown in broken lines, are not part of the claimed design;
It is always recommended when there is a matter for which protection is not sought are disclaimed by means of broken lines or coloring to be accompanied by description.
DM/084412; “Door fittings”

34. Optional contents Exception to the lack of novelty
Relation with the principle design
Appointment of the representative
Information on eligibility for protection
Economic status and certificate where applicable
Locarno classification
Having said that, I shall also underline that IB would delete ex officio any non-required and non-permitted matter in the application, furthermore, if the application is accompanied by any document other than those required or permitted, IB would dispose of the said document.

35. Requirements concerning the reproductions
Legal framework
Article 5 (1999Act/1960Act)
Rule 9 of the Common Regulations
Administrative Instructions – Section
What can be more important in the application than reproductions
Requirements concerning reproductions are stipulated in the Article 5 of the both acts in the Rule 9 of the CR under the Hague act and in the Sections 401 to 405 of the AI

36. Views
Six views:
JP: Front, back, top, bottom, left, right view by the orthographic projection
method are mandatory (Declaration under Rule 9 (3) )
KR, US: Six views are recommended, not mandatory

37. To Sum Up Role of the International Bureau
● Formal examination (are the formal requirements met?)
● Registration and recording in the International Register
● Translation and Publication in the International Designs Bulletin
● “Notification” to Designated Contracting Parties
(through the publication of the Bulletin on WIPO website)
Effects of the international registration at this stage
● Same effect as a regularly filed national application in all
Designated Contracting Parties

39. EFFECTS OF AN INTERNATIONAL REGISTRATION

40. Effects of an IR under the 1999 Act
After publication (Article 14(1))
= effects as application from the date of IR, at least
If no refusal is notified (Article 14(2)(a))
= effects as a grant of protection, in principle, at the latest from the expiry date of the applicable refusal period (6 or 12 months)
If the refusal is withdrawn (Article 14(2)(b))
= effects as a grant of protection at the latest from the date on which the refusal was withdrawn

41. Effects of an IR under the 1999 Act
“Two exceptions” to Article 14(2)(a)
applicable through an additional declaration by a CP (whose Office is an “Examining Office” or whose law provides for an opposition procedure) opting for 12-month refusal period
Option 1 (Rule 18(1)(c)(i))
The latest time at which protection must be granted may be extended up to 6 months after the expiry date of the 12-month refusal period
CPs: Spain, Turkey, USA

42. Effects of an IR under the 1999 Act
“Two exceptions” to Article 14(2)(a) - continued
Option 2 (Rule 18(1)(c)(ii))
Protection will be granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the applicable refusal period.
= Protection can be granted even after the refusal period, but only in exceptional circumstances.
CPs: Japan, Republic of Korea, USA

43. REFUSAL AND OTHER OFFICE ACTIONS

44. Substantive Examination by the Office
Substantive examination, if any, undertaken by the Office of a designated CP 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 IR
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

45. Office Actions Refusal Withdrawal of Refusal
Statement of Grant of Protection
Invalidation

46. substantive examination
Refusal Mechanism
Office of a
Designated CP
“refusal”
substantive examination
formality check
“withdrawal” ?
“response”
Local agent
Holder

47. Refusal: Time frame
Principle: 6 months (Article 12(2) of the 1999 Act and Rule 18(1)(a))
Exceptions (Rule 18(1)(b)):
(which may be opted for by a Contracting Party whose Office is an “Examining Office” or whose law provides for an opposition procedure)
The period may be extended up to 12 months

48. Refusal: Basic principles
Within refusal period: starting from the date of international publication
Provisional objection: which may become a final decision, without further notification
Languages: English, French or Spanish
Total (for all the designs) or partial (for some of the designs only)

49. Refusal Ground: No formal ground
Principle:
substantive grounds only (incl. opposition)
Exceptions:
requirement as to unity of design (Article 13) *
specific views of the design not furnished
(Rule 9(3)(a)) *
* Declarations possible only under the 1999 Act

50. Refusal Ground: Typical substantive grounds
Definition of an industrial design
Type of design not protected (ex. “logo”)
Disclosure insufficient to figure out the design
Public order and morality
Conflict with prior applications / registrations
Novelty
Creativity / Non-obviousnes

51. Rule 9(4) of the Common Regulations
No refusal on formal grounds.
Refusal possible on the ground «that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design»
Criteria for sufficient disclosure of an industrial design may be different from one jurisdiction to another.

52. What causes the disclosure of the design to be insufficient and the representation of the design to be unclear?
Lack of a sufficient number of views
Lack of /or inadequate surface shading
Lack of consistency among the views
Lack of a description to clarify the scope of protection

53. Lack of / or Inadequate Surface Shading
The exact contours of the product and the specific portions of the product for which protection is sought are unclear without surface shading
Indication of product: “Pharmaceutical tablet”
1.1
1.2
1.3
1.4
Perspective
Top
Bottom
Front
Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices

54. Lack of / or Inadequate Surface Shading
Adequate and proper surface shading clarifies the contours of the design and the scope of protection sought
1.1
1.2
1.3
1.4
Perspective
Top
Bottom
Front
* JP: submitting sectional views or perspective views to represent relief or contours of surfaces of the product is a more preferable way than providing shading
Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices

55. The CP may make a declaration under Article 13(1) of the 1999 Act.
Unity of design: Declaration under Article13(1)
If the applicable law provides for any of the following types of requirement at the time it becomes party to the 1999 Act
Design1
Design1
Design2
Design2
Design1
Design3
Design3
Each of the designs must conform to a requirement of unity of design, unity of production or unity of use (have a similarity in appearance, production or use of the product)
Each of the designs must belong to a set of products
Only one design may be the subject of a single application
The CP may make a declaration under Article 13(1) of the 1999 Act.
The CP may issue a refusal if the specified requirement is not complied.

56. Specific views: Declaration under Rule 9(3)(a)
No requirement as to the types of views. A single reproduction is enough.
International Bureau
The law of the CP
If the law provides for certain types of views that must be submitted, the CP may specify, in the declaration, the views required and the circumstances in which they are required.
Six orthographic views
(Front view + Top view + Right side view + Left side view + Rear view+ Bottom view)
One perspective view
Front view + top view + right side view
Two perspective views showing a whole appearance of the product
Front view + one perspective view
etc.

57. Withdrawal of Refusal / Statement of grant of protection
After refusal
- Notification of withdrawal of refusal (Rule 18(4))
- Statement of grant of protection (Rule 18bis(2))
Where no refusal
- Statement of grant of protection (Rule 18bis(1))
- within the applicable refusal period
- optional but recommended

58. Withdrawal of Refusal / Statement of grant of proteciton: Amendments of design
Where amendments are made to the design in a procedure before the Office, and the design as amended is accepted, a statement of grant of protection (or notification of withdrawal of refusal) must be sent, with the information concerning the amendments (new Rules 18(4) and 18bis(1) and (2)).
Information concerning the amendments will be made publicly available by the IB, through the Bulletin.

59. Withdrawal of Refusal / Statement of grant of protection: Amendments of design
Office of a
Designated CP
Amendment accepted, refusal ground remedied
“withdrawal of refusal or statement of grant of protection”
“notification”
amendment
“publication in the Bulletin”
Design
as amended
“response”
Local agent
Holder

60. Bundle of Rights under the Hague DM/ Statement of grant of protection:EM, JP, KR Notice of allowance: US
Registration Number
DM/
Product
Brush for animals
Holder
SSERTSON GROUP
23 avenue de SURY,
F BONSON (FR)

61. Bundle of Rights under the Hague DM/ Statement of grant of protection:EM, JP, KR Notice of allowance: US
Registration Number
DM/
Product
Shoe
Holder
VALENTINO S.P.A.
Via Turati, 16/18,
I MILANO (IT)

62. Bundle of Rights under the Hague DM/ Statement of grant of protection:EM, JP, KR Notice of allowance: US
Registration Number
DM/
Product
Base for a safety child seat
Holder
CYBEX GMBH
Riedinger Strasse 18,
95448 Bayreuth (DE)

63. Invalidation
Office or court decision which is made after producing protection (Rule 19)
Remarks:
Outside the “Refusal” mechanism
“Post-grant opposition” included
Opportunity to defend the right
Only the final decision

64. Renewal – Paper Form or Electronic Form
Paper form: form DM/4
E-renewal interface:
Online service
Online payment (current account or credit card)

65. E-Renewal

66. Summary: Post-Registration Procedures
The holder may request:
reduction of the scope of the IR
prolongation of the IR
transfer IR to new owner
update information about the holder
representation before the International Bureau
Renunciation
Limitation
Renewal
Change in Ownership
Change in name and/or address of the holder
Appointment, change or cancellation of representative

67. E-Payment

68. Help and guidance How to file your application
Gives an overview on how to file an international design application
Hague Guide for users
Provides in-depth information with legal references
Hague System E-Filing Tutorial
Describes how to use the interface

69. THANK YOU! Thank you! www.wipo.int/hague MORE INFORMATION AT
Thank you!