13 April 2017
Among the news exciting IP lawyers in April 2017 was a written statement by Jo Johnson MP setting out the time table for the UK’s joining the Hague System.
We will have ratified the Geneva Act of the Hague Agreement for international registration of designs by 31st March 2018 and be in a position to launch the service on 6th April 2018.
The “Hague System for the International Registration of Industrial Designs” was originally signed in 1925 and was intended to provide a mechanism for the registration of designs in multiple countries via a single design filing authority, the World Intellectual Property Organization (WIPO). The Hague System offers advantages such as the possibility to file a registration in a single language and having to comply with only a single set of formal requirements, rather than a large number of individual and often conflicting national requirements, and complements the Patent Cooperation Treaty, which provides similar advantages for patent applications.
However, the Hague Agreement is a closed system and only available to persons based in a Hague member state or belonging to an intergovernmental organisation that is member to the Hague Agreement. The European Union (EU) is such an intergovernmental organisation and so, even though the UK has so far not ratified the Hague Agreement, UK-based applicants are currently able to register designs under the Hague Agreement by virtue of the UK’s EU membership. This position can be expected to change following the UK government’s mandate to leave the EU.
As such, the UK ratifying the Hague Agreement will ensure the Hague System is available to UK users. Likewise, this will also ensure that design protection in the UK via the Hague system will be available to other Hague users. This may generally increase the attraction of the Hague System.
To put this into context, at least from a UK or European perspective, the attraction of the Hague System was hitherto modest. This is because there are several options to obtain protection for a design in the UK. In addition to registering a design nationally with the UK Intellectual Property Office (UKIPO), it is possible to obtain EU-wide protection via the European Union Intellectual Property Office (EUIPO). An EU-wide registration will cover many European countries often of commercial interest, such as Germany, France, Italy, Spain or Poland – and currently the UK. In addition, it is a concern with the Hague Agreement that, although applicants have to comply only with a single set of formal requirements when submitting a design application with WIPO, design protection rules in many Hague member countries have not been harmonised. For instance, some countries have different rules on how many types (classes) of designs may be included in a single application, or how the designs should be represented. Thus, even though it is possible to use a single filing office (WIPO) to register a Hague design, the Hague System does not provide a guarantee that national patent offices will not raise objections to the design. For instance, several Hague member state have filed so-called “Declarations” with WIPO, setting out additional formal requirements for the registration to be valid in the country in question. The lack of harmonisation leads to additional cost for completing a registration procedure for a Hague design. This lack of harmonisation is not present with EU-wide registrations and so many applicants tend to prefer protection via an EU-wide design registration.
However, the formal requirements for design protection in the UK and the EU are very similar, meaning that a Hague design registration prepared with the UKIPO and EUIPO formal requirements in mind is likely to provide a reliable scope of protection in both the UK and the EU. At the same time, the Hague Agreement also provides the opportunity to additionally designate other European non-EU countries, such as Switzerland and Norway, as well as increasingly important manufacturing bases such as Tunisia, Egypt and Turkey, and Asian countries such as Singapore and South Korea. For a full list of Hague member states, see www.wipo.int/hague/en/members/.
As such, the UK’s ratification of the Hague Agreement will provide a cost-effective route to protecting designs in the EU and, separately, in the UK. Hague design registrations are administered by WIPO and have the same legal effect in the EU or the UK as registrations granted by the EUIPO or the UKIPO, respectively.