1. 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

2. 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”

3. Hague registration process
Direct/Paris Route
The Hague System

4. 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”

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

6. 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

7. 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?

8. Growing Union

9. 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

10. Designs applications & counts

11. Designations

12. Recent national experiences
HYR reports on top 5 countries (EU, CH, DE, FR, TR)
Acceded to Geneva Act 1999 ( ) – ‘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?

13. Applications by selected CP (2010-2015)

14. Designations of selected CPs (2010-2015)

15. 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!)

16. 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

17. 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!!

18. Changing face?

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