LLM University of Turin - Study Visit to WIPO Registration of Designs under the Hague System: The Practical Handling of International Applications under the Hague System Betty Berendson Senior Information Officer Information and Promotion Section The Hague Registry Geneva October 3, 2013

Contents Added value of industrial designs Why protect designs? Background – What is the Hague System? Key Principles and Characteristics Geographical Scope of the Hague System – Going Global Main Advantages The International Procedure Some Statistics Information and IT Tools

Added Value of Industrial Designs

Design sells!

The Swatch Collection -Same brand -Same technology -Same price -1,000’s of registered designs

Design drives consumers’ choice “Case studies clearly demonstrate that … people are willing to pay more for the well-designed product or packaging solely based on appeal.” Virginia Postrel, The Age of Look and Feel, Harper Collins, 2003

Why Protect Designs?

Design is an Asset Good design is a creative process Research and development for design is needed Research and development is an investment The outcome (design) is an asset Assets need to be protected

One More Reason to Protect Designs Designs are about the look The look is easy to copy !

Why is it important to Register a Design? Copyright or unfair competition may not be available « Registered design » titles allow for: Cease and desist letters IP brigade crack-downs Interlocutory injunctions Custom seizure

Registration Rights Are Territorial Each registration is limited to the territory of the jurisdiction Market in many jurisdictions = getting a title for each company Market A Market B Market C IP Office A IP Office B IP Office C

The Hurdle to International Protection Multiple filings are expensive and cumbersome many Offices for filing many languages many formalitiesone language many currenciesone currency many registrationsone int. registration many renewalsone renewal many modifications one modification many foreign attorneys or agentsforeign attorney or agent (needed only if refused)

Background - What is the Hague System?

The Hague System: a cost- effective way to protect industrial designs internationally

The Hague System is… A procedural agreement for the centralized acquisition and maintenance of industrial design rights for the filing of an industrial design « internationally" (in Contracting Parties to the Hague Agreement) It provides a mechanism for the central management (post- registration)

One to Many Relationship File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated “Bundle of Rights” If no refusal is issued, the resulting international registration has the effect of a grant of protection in each designated Contracting Party The Hague System is…

Key Principles

No need for a basic application/registration Designation of the Contracting Party of the holder possible Most international applications are filed directly with the International Bureau (not via an Office) E-filing and e-renewal available Subsequent designation is NOT possible

Who can use the Hague system? Hague System = closed system: ● Entitlement to file an international application: the applicant needs a connection with a CPs via nationality, domicile, real and effective industrial or commercial establishment or habitual residence (Geneva Act only) ● Only CPs may be designated

Geographical Scope of the Hague System – Going Global

Hague Membership Status on March 31, 2013 (by most recent Act)

Hague Union 45 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 60 Contracting Parties

Recent Accessions to the Geneva Act Brunei Darussalam (as from December 24, 2013) Tunisia (June 13, 2012) Tajikistan (March 21, 2012) Montenegro (March 5, 2012)

Potential accessions to the Geneva Act Republic of Korea USA China Japan Russian Federation Morocco ASEAN Countries (announced for 2015) Trinidad and Tobago Barbados Madagascar

Main Advantages of the Hague System

Hague System is… Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget Flexible, affording right holders great flexibility in targeting national, regional or global markets for particular goods

When Filing ●ONE international application ●ONE international registration for all the designs included in the application ●In ONE language (English/French/Spanish) ●Payment of ONE set of fees ● Payment in ONE currency (= Swiss francs) ● Filed with ONE office (International Bureau - WIPO)

Central Management ONE request filed within the International Bureau in case of: ● Change in ownership ● Change in the name or address of the holder ● Renunciation ● Limitation ONE renewal request (e-renewal since )

Advantages of the Geneva Act Accession opened to certain intergovernmental organizations (currently the EU and OAPI); Facilitates accession for countries whose legislation foresee novelty examination; Entitlement also on the basis of habitual residence; Maximum deferment period of 30 months; Minimum duration of protection of 15 years (5+5+5); Larger geographical scope; Timeframe of six months to notify a refusal may be replaced by 12 months (Offices that carry out substantive examination or whose legislation foresee opposition).

Hague System / E-Filing Very useful and user-friendly IT tool More than 80% of the international applications are currently filed through the e-filing interface The e-filing interface is available on the WIPO website

Hague System / E-Renewal The e-renewal interface, introduced in January 2011, is a successful IT tool More than 60% of the international registrations are currently renewed through the e-renewal interface The e-renewal interface is available on the WIPO website ?lang=EN

The International Procedure

Filing an International Application in Spanish, English or French directly with WIPO, electronically or on paper 100 up to 100 different designs (same Locarno class) single set of fees (in CHF) is to be paid A representative before WIPO may be appointed Will use correspondents to defend against refusals

Role of the International Bureau (1/2) Formal examination Translation in the other 2 languages Recording of the IR in the International Register Crediting of designation fees on account of CPs Publication in the International Designs Bulletin

Examination by the IB Formal examination only Application complete and in order Specific elements for certain CPs Seek correction when irregular No substantive examination “Design” not defined by Hague texts Public order and morality not checked No novelty search

Every Friday, on WIPO’s website Serves as notification to Designated Contracting Parties Offices can upload the data into own system (XML) This takes the place of national/regional publication Publication in the International Designs Bulletin

Next Stage: Procedure at DCP’s Level Normal Substantive Examination by Office Only to the extend it applies to national filings Formality examination is skipped Statement of Grant of Protection can be issued Possible Refusal and Withdrawal of Refusal On same substantive grounds as for direct filings Same remedies must be provided to Holder Must be communicated within time limit Effect limited to that CP’s territory

“refusal” Local agent Legal opinion Refusal: Mechanism Holder business decision IB of WIPO formal examination Office of CP substantive examination NotificationInstructions Petition

Effects of the International Registration (where not refused) Same rights as a local design registration IR becomes a bundle of independent local rights Duration is 5 years, renewable twice at least IR offers the advantages of central management

Some Statistics

International Registrations

Designs in International Registrations:

Designs per International Registration (2012)

Designations per International Registration (2012)

Most Designated Contracting Parties

Amounts of Fees paid per International Registration (2012)

Amounts of Fees paid per International Registration (2012)

2012: Top Filing Contracting Parties Contracting Party of entitlement (through establishment, domicile, nationality or habitual residence): 1.European Union (5168 designs, 41.5%) 2.Switzerland (2855 designs, 22.9%) 3.Germany (1630 designs, 13.1%) 4.France (1265 designs, 10.2%) 5.Turkey (278 designs, 2.2%) 6. Norway (186 designs, 1.5%) 7. Spain (101 designs, 0.8%) 8. Poland(86 designs, 0.7%) 9. Croatia (76 designs, 0.6%) 10. Liechtenstein (73 designs, 0.6%)

Country of address of the applicant: 1.Germany(3953 designs, 31.7%) 2.Switzerland(2447 designs, 19.6%) 3.France (1425 designs,11.4%) 4.Italy (926 designs, 7.4%) 5.Netherlands (596 designs, 4.8%) 6.United States of America (407 designs, 3.3%) 7.Turkey(341 designs, 2.7%) 8. Austria (248 designs, 2%) 9.Luxembourg(200 designs,1.6%) 10.Sweden(183 designs, 1.5%) 2012: Top Filers of International Applications

2012: International Applications 2,604 international applications received - containing 12,454 designs (max. 100 designs / application) 3.3% growth to 2011 in the number of applications 3.5% growth to 2011 in the number of designs

CLASSESPRODUCTS AND SERVICES2012SHARE Class 9Packages and containers for the transport or handling of goods % Class 10Clocks and watches and other measuring instruments, checking and signaling instruments % Class 12Means of Transport2078.5% Class 6Furnishing1998.2% Class 7Household goods1596.5% 2012: Five Most Popular Classes in International Registrations

International Registrations in Force in the International Register (on December 31, 2012)

2012: Designs in International Registrations: Top Origins

Information and IT tools

New E-filing Platform The new e-filing platform available since June 3, 2013 includes following improvements: a WIPO User account facilitated downloading of reproductions real time checking of certain formalities saving of applications in progress fully integrated fee calculator payment of fees by credit card …and much more!

Hague Portfolio Manager (HPM) The HPM will enable access to data uploaded to the user account, such as the bibliographic data of the holder and a portfolio of international applications and registrations, It will allow as well for interaction between the holder and the International Bureau. The HPM will also make it possible to manage portfolios by allowing for the submission to the International Bureau of requests for the recording of modifications through an electronic interface related to a user account.

Thank you!