A design registration can come to be through four different routes depending on its intended geographical scope. It can come in the form of a UK registered design, a Registered Community Design (RCD) encompassing all EU member states, a ‘foreign’ registration covering specific countries through direct national application, or it can be an International Registration under the Hague System, covering 66 member states.

With the UK drastically changing its relationship with the EU, the talks of a new path for design protection abroad have temporarily rested at the Hague System and direct membership. Until now, and until 2018’s finalised Brexit, UK IP owners enjoy membership in the Hague System through UK’s membership in the EU.

What is the Hague System?

The Hague System to international design protection is what the Madrid System is to international trade mark protection. Its members include key established and upcoming economies like France, Germany, Japan, USA, EU itself and OAPI (African IP Organisation). The system is governed by two acts the Geneva Act and the Hague Act, and is administered by WIPO (World Intellectual Property Organisation) based in Geneva, Switzerland.

Unlike EU’s Registered Community Designs (RCDs), a registered international design through the Hague System is not unitary and permits for the selection of specific member states an applicant wishes to designate. An EU registration, on the other hand, takes an all or nothing approach with a mandatory coverage of all its member states. Notably, an applicant can only designate the EU as part of an international application, achieving the effect of a Registered Community Design.

Anyone can apply, so long as they are a national, reside in or have a “real and effective industrial or commercial establishment” within one of the Hague System member states. The application is administrated in English, French or Spanish. A single application can accommodate for up to 100 designs, if they are to fall within the same International Locarno Class. For example a furniture company may file 100 designs for their products in a single multiple design application, as they will all fall under the same class, ‘Furnishing’.

Most notable differences between the EU and the Hague System

The Hague System does not practice a ‘base design’ policy. A direct application to WIPO diminishes the need for an Office of Origin as an intermediary, making the process simpler and potentially quicker. A Hague application can therefore also act as a first (home) filing and provide the priority date for a subsequent registration in the 6 months that are to follow.

The Hague back to front process

A direct filing to WIPO will be reviewed for formalities (correct fee and classification only), then issued a Certificate of Registration, published in the International Design Bulletin and forwarded to the Intellectual Property Offices (IPOs) of all the designated within the application countries for detailed examination. Receipt by national IPOs is noted as the Notification date. Each country undertakes their own examination and is given a period of 6 to 12 months for objections. Design protection is assumed once the objection period runs out and no objections have surfaced.

If an objection, also known as a Provisional Refusal, is raised, WIPO communicates it to the applicant. The applicant’s response in the form of an amendment or an argument is made to the objecting jurisdiction’s Intellectual Property Office. The concerned IPO will then consider the applicant’s response in compliance with their national laws. If the objection is overcome the national office can, but is not required to, issue a Statement of Grant. If an objection cannot be overcome, an appeal at national level will be possible, but evaluation of costs would be necessary to decide if the process is worthwhile.

Once registered, an international design right will be valid for 5 years and can be renewed for further 5 year periods to a maximum of 15 to 50 years depending on the designated country. Renewals are filed directly to WIPO.

A combination of national preferences

Member states of the Hague System retain the right to opt in and out of certain procedural conditions. Multiple design applications are not accepted by all countries, and would call for separate applications. Others would accept them as long as they fulfil a so called unity of design requirement. What that requires is that all the designs in a multiple application come form a single creative idea. The countries that have adopted this policy are Estonia, Japan, Kyrgyzstan, Romania, Singapore, Syria, Tajikistan and USA.

Deferring the publication of a design is another varied practice amongst member nations. Similar to the EU, the maximum deferment period is 30 months, yet the minimum is no deferment at all, as is the case with countries like Hungary, Iceland, Monaco, Poland, Ukraine and USA. Other members vary with a 6 to 12 to 18-month design publication deferment period.

An equally significant consideration is that, for some countries, there may be a lack of a grace period for a design being in the public domain. Any disclosure therefore may jeopardise a design’s validity for registration. This is where a priority date becomes increasingly important in ensuring a design application is not invalidated.

Every system has its limitations. What are Hague’s?

Once filed, a design application cannot have any new countries added to its list of designations. It is possible however to file a new application for the same design, tailored for a new jurisdiction.

As noted at the start, the Hague System is made from two statutes, the Hague Act of 1960 and the Geneva Act of 1999. Membership can be via either one of these. As part of the EU, the UK is a Hague member through the Geneva Act and as such a UK applicant has access only to other Hague members that have joined through the Geneva Act. The countries that the UK does not have access to within the Hague System include Greece, Italy, Mali, Morocco, Netherlands and Senegal. Although arguably Greece, Italy and the Netherlands can be accessed by designating the EU, but that may entail designating all other EU members. Alternatively a direct foreign application to individual national Intellectual Property Offices would facilitate a registration within inaccessible through the System countries.

Closing Thoughts

The Hague System offers some relief in respect of international design protection outside of the European Union. It appears broader in scope with more national preferences in consideration but nonetheless an equally effective system for design protection. The broader view however seems to be that design rights abroad are rarely as strong as they are at home. Yet this is a view that is most likely to see some development. Trade mark law abroad has been increasingly strengthened and design appears to be following a similar path.