Designers seeking to protect their valuable designs by registering them in a number of territories can make use of the Hague system of international designs, rather than filing separate applications in the territories of interest.
The Hague system is a 'one stop shop' for international design applications – a single application to the World Intellectual Property Office (WIPO) can lead to protection for up to 100 designs (provided they are in the same classification, and subject to national requirements for design unity, which is not always easy to achieve for multiple designs) in up to 82 countries, with a centralised renewal and maintenance system. Key countries joining the Hague system in recent years include the US and Japan (in 2015) and the Russian Federation (which has been available as a designating state since 28 February 2018), with Canada, Israel and Mexico expected to join in the near future.
The UK is a member of the Hague system through its membership of the EU. Regardless of Brexit, the UK Government had started the process of ratifying the Hague Agreement in its own right back in 2015 – recognising that some UK-based businesses would welcome the opportunity to file for international applications, without requiring an EU-wide designation; and also that some international businesses would want the opportunity to designate the UK only, rather than as part of an EU designation. Whilst these scenarios seem fairly limited, the UK's ratification of Hague took on an extra dimension in the light of Brexit.
On 13 March, the UK deposited its ratification documents in Geneva and the UK will be a designating state from 13 June 2018. The UK's accession to the Hague Agreement provides a flexible and cost effective means of accessing a bundle of design rights, and although Hague applications can bring unique challenges, these can be overcome with forward planning and the relevant legal advice.
In particular, as there is no harmonisation in design standards across the 68 contracting parties, this can present some difficulties in securing an enforceable registration. The single application filed at WIPO will need to be compliant with the requirements of design filing in multiple territories. Due to the varying grace periods in each territory, if the registration is accepted in one territory but not in another, it is possible that novelty could be destroyed in certain territories thereby restricting future registration. Designers wishing to file an application under the Hague Agreement will therefore need to:
- ensure they meet the criteria for filing by virtue of being resident, domiciled or having a real and effective commercial establishment in a signatory country (although the rules surrounding these criteria require careful consideration);
- file with a well thought-out filing strategy in mind allowing sufficient time to obtain the necessary local advice before drafting and filing the application with WIPO; and
- consider the timing of the application, particularly in light of the different grace periods determining novelty that vary from territory to territory.
Although an application under the Hague Agreement may not be appropriate for protection of one-off designs in a wide variety of territories, it will be particularly useful for those design-led businesses looking to obtain cost effective access to registration in specific countries to protect significant portfolios.