2 Ludmila Celisová Giuseppe Quinterno Marcus Höpperger Designs Service, OHIMGiuseppe QuinternoSenior Partner and Member of the BoardJacobacci & PartnersMarcus HöppergerDirector of the Law & Legislative Advice DivisionBrands & Designs Sector, WIPOChair: Susie ArnesenPartner, Attorney-at-LawSandel, Løje & Partnere
3 Development in International Filings - Introduction
6 Development and comparison: EU filings (i.e. OHIM)75,000 designs yearlyRegistered Community designs since May 2003 (450,000 registered designs in force)International filings (i.e. WIPO)12,000 designs yearlyInternational registrations under the Hague Agreement (109,000 registered designs inforce)National filings (e.g. CZ IPO)1,200 filed designs yearlyNational registrations since 1962 (12,000 registered designs in force)A starting point for individuals and SMEs for affordable costs (€ 30/15 perdesign)A step before EU or international protection with the benefit of national priorityA complementary system of substantive examination to the communityregistration without examinationLidka
13 Hague Union 45 Geneva Act (1999) (including EU and OAPI) Marcus45 Geneva Act (1999) (including EU and OAPI)15 Hague Act (1960) ________________________________________60 Contracting Parties
14 In 2008 EU acceded to Geneva Act of Hague Agreement. Designation of EU = protection as registered Community Designs.The gate of access for legal and natural persons residing or operating within EU into more than twenty countries and regional territories out of EU.20 individual memberships of EU states.However, national entities enjoy the advantages of the international registration system even though an EU state is not a member of the Hague system.Most active applicants from Germany and France.In 2011 almost 4,500 designs filed from EU.In 2011 over 9,000 designs filed to claim protection in EU.Lidka
15 Potential Accessions to the Geneva Act KoreaUSA (the Bill has already been signed, foreseen accession by end of 2013)China (possible accession by the end of 2013)JapanRussian FederationMoroccoASEAN Countries (announced for 2015)Trinidad and TobagoBarbadosBruneiMadagascarMarcus
17 New E-filing PlatformA new e-filing platform available before the end of this year which will include following evolutions and improvements:a WIPO User accountfacilitated downloading of reproductionsautomatic check and transformation of imagesintegrated fee calculatorpayment of fees by credit cardMarcus – comments from Giuseppe
18 Hague Portfolio Manager (HPM) The HPM will enable access to data uploaded to the useraccount, such as the bibliographic data of the holder and aportfolio of international applications and registrations,It will allow as well for interaction between the holder andthe International Bureau.The HPM will also make it possible to manage portfolios byallowing for the submission to the International Bureau ofrequests for the recording of modifications through anelectronic interface related to a user account.Marcus – comments from Lidka?? Guiseppe??
19 Filing an International Application designating the EU via WIPO Filing an RCD at OHIMvs.Filing an International Applicationdesignating the EU via WIPOGiuseppe
20 Who can file? Language OHIM: any natural or legal person. WIPO: any natural or legal person having an entitlement (nationality of a EU Member State, or domicile, or commercial or industrial establishment, or habitual residence in a EU Member State).LanguageOHIM: any official language of the Community (need to indicate a second language chosen among the official languages of OHIM: Spanish, English, French, German and Italian).WIPO: English, French, Spanish.Giuseppe
21 Deferment of publication OHIM: up to 30 months from filing date (or priority date); deferment involves payment of an official fee.WIPO: up to 30 months from the filing date (or priority date); no deferment fee applicable.Giuseppe
22 Number of designs/models in one application OHIM: no limit.WIPO: up to 100 designs.Number of views for each design/modelOHIM: a maximum of seven views.WIPO: no limits.Giuseppe
23 CostsOHIM and WIPO have different schedules of Official Fees: convenience to file with one or the other depends on number of designs, number of views, deferment of publication, etc.OHIM: see website for calculation of fees.WIPO’s fee calculator (in Swiss Francs) at:Giuseppe
26 OHIM: Allows to save and restore the application form. E-Filing InterfaceOHIM: Allows to save and restore the application form.WIPO: application form must be completed on-line.Giuseppe
27 Register of International Registrations (IR) OHIM does not keep a Register of IRs, not even those designating the EU: the International Bureau of WIPO does!(When searching the RCDs in the name of a given subject, besides searching in the OHIM Database, also search in the Hague Express Database of WIPO).Giuseppe
29 International Classification for Industrial Designs under Locarno Agreement “the Locarno Classification”Signed 8 October 1968 (amended 28 September 1979).32 Locarno classes and their 219 sub-classes (7,024 indications of products tonavigate the users through the classification).Products are classified first according to their purpose and subsequently according to the object that they represent.The classification is equipped with short notes giving clue in which class/sub-class a product is classified. No definitions of the objects which the indications of products represent.Too vague to narrow searches sufficiently (noise), inconsistency in classes and subclasses, no synonyms or homonyms rules…Lidka
30 CE renewed expression of interest in index for visual design features. 10th edition adopted by Locarno CE in October entry into force on 1 January 2014.CE renewed expression of interest in index for visual design features.Locarno Pilot Group in charge of development of such a system.Continued testing of system so far developed + explore other systems.CEL/11/2Marcus – Lidka??
31 Retrieval of designs information: The goal is to find design rights in force but also prior artwith a functional tool responding to the growth ofdatabases of IPOs, OHIM, WIPO......either by revision of the International Classification forIndustrial Designs, orby another way reflecting the nature of designs – theappearance features (indexing the designs with controlledvocabulary, automatic recognition of pictures).(Pilot Working Group of Locarno Union, OHIM Cooperation Fund projects)Lidka – followed by question by Susie: Lidka, where are we now with the pilot working group? Still working? Under what auspices?
33 Object v purpose v function A holder v advertising unit v a spare part ofmeans of public transport:Lidka
34 IdeallyClassification by object regardless its function:Lidka
35 Pilot Working Group of Locarno Union/OHIM Cooperation Fund: - A third level of classification is considered as complementary to the class/sub-class structure of Locarno classification.- Two classifications in one:first and second level of Locarno classification = function;a six digit code in third level = object or appearance of a product or its part.- A single position for each product or a group of visually similar products regardless their function.- Cross-references excluding synonyms.- Cross-references excluding homonyms.- Pictorial and verbal definition of each product.- Classification of visual features of shapes, decorative elements, colours and material.Lidka
36 Search by combination of the terms: chairs AND wooden patternchairs AND wooden pattern AND armrestschairs AND wooden pattern AND triangular in planchairs AND cupscasterschairs AND castersLidka
37 Two design projects within OHIM Cooperation Fund: Search Image, a software tool to enable images to be searched for on relevant databases, either by code or by use of an image recognition ability; andDesignView, the portal for registered design information from participating national offices, OHIM and WIPO.Should integrate Search ImageLidka