Refusal of Protection

Notion of refusal

Under the Hague Agreement, the word “refusal” does not mean a final decision of refusal, that is to say, a decision that is no longer subject to review or appeal. All that is required is that, within the applicable refusal period (refer to “Time limits for refusal”), a designated Office indicates the grounds which may be liable to lead to a refusal of protection. In other words, what must be notified within the applicable refusal period is simply a provisional objection. In practice, therefore, refusals may be based on:

• an objection resulting from the ex officio examination undertaken by an Office;
• an opposition lodged by a third party. It must be emphasized that, under the wording of the Hague Agreement, the simple fact of an opposition being lodged against an international registration must be notified to the International Bureau as a “refusal of protection based on an opposition”. This does not prejudge the eventual decision taken by the Office concerned on the opposition.

Ex officio examination, as well as examination following an opposition by a third party, is carried out by the Office in accordance with the law of its Contracting Party. For example, the Office may examine ex officio only the formal requirements of national applications, or that the design meets the definition of a design under its law, or carry out an exhaustive worldwide novelty examination.

Grounds for refusal

Each designated Contracting Party has the right to refuse, in its territory, the grant of protection to an international registration. Such refusal may be total or partial, in the sense that it may apply to all the designs which are the subject of the international registration or to some only of them.

60 Article 8(1); 99 Article 12(1)

Pursuant to Article 12(1), protection may not be refused on the grounds that the international registration does not satisfy formal requirements, since such requirements are to be considered by each Contracting Party as having already been satisfied following the examination carried out by the International Bureau. For example, a designated Office may not refuse protection on the ground that the required fees have not been paid or that the quality of the reproductions is not sufficient, since such verification is the exclusive responsibility of the International Bureau.

Likewise, a Contracting Party may not refuse the effects of the international registration on the ground that requirements relating to the form of the reproductions that are additional to, or different from, those which may have been notified by that Contracting Party (refer to “Specific views”) have not been met. A Contracting Party may however refuse protection on the ground that a reproduction does not sufficiently disclose the appearance of the design. In such a case, the reason for the refusal would be the substantive ground that the design is not sufficiently disclosed, not the formal ground that the reproduction, for example, does not contain surface shading.

Rule 9(4)

The refusal must indicate all the grounds on which it is based, together with the provisions of the applicable legislation. In general, the refusal grounds may only relate to substantive issues, such as lack of novelty of the design. However, there are two exceptions to that general principle, namely, where a Contracting Party has notified a declaration under Article 13(1) concerning the requirement of unity of design, or a declaration under Rule 9(3) concerning views required (refer to "Declarations by Contracting Parties", "Unity of design", "Specific views"), it may issue a refusal on that basis.

It is not within the competence of the International Bureau to express an opinion as to the justfication of a refusal of protection or to intervene in any way in the settlement of the substantive issues raised by such a refusal.

Unity of design

There is an exception to the principle set up in Article 12(1), namely, a Contracting Party whose law, at the time of its becoming party to the 1999 Act, contains a requirement of unity of design may notify that fact to the Director General of WIPO.

The purpose of the notification is to enable the Office of the Contracting Party to refuse the effects of the international registration, pending compliance with the requirement of unity of design, as specified in the notification by that Contracting Party. In such a case, the holder of the international registration may divide the international registration before the Office concerned in order to overcome the grounds for refusal. The Office is entitled to charge the holder of that registration as many additional fees as divisions prove necessary.

Brazil, China, Estonia, Kyrgyzstan, Mexico, Romania, the Russian Federation, the Syrian Arab Republic, Tajikistan, the United States of America and Viet Nam have made a declaration under Article 13 of the 1999 Act to notify that they require that all designs contained in a single international application are subject to a requirement of unity of design (refer to "Declarations by a Contracting Party", "Unity of Design").

It is not within the competence of the International Bureau to express an opinion whether or not the requirement of unity of design under the law of a designated Contracting Party is met. However, applicants who designate Brazil, China, Mexico, the Russian Federation, the United States of America or Viet Nam are highly recommended to refer to their respective declarations in order to mitigate the risk of refusals by those Contracting Parties (refer to "How to submit an international application to the International Bureau: eHague interface or form DM/1?", ("Item 6: Number of design, reproductions and/or specimens").

In addition, it is recommended to consult the Guidance on Including Multiple Designs in an International Application in Order to Forestall Possible Refusals, which was established in consultation with the Contracting Parties that notified a declaration under Article 13(1) of the 1999 Act that its applicable law contains special requirements concerning unity of design.

99 Article 13

Specific views or sufficient disclosure of the design

Only China, the Republic of Korea and Viet Nam have made a declaration under Rule 9(3) (refer to "Specific views"). This being said, it is recalled that any Office of a designated Contracting Party may refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the design, pursuant to Rule 9(4).

The criteria for sufficient disclosure of a design may be different from one jurisdiction to another. In order to mitigate the refusals under Rule 9(4), applicants are highly recommended to refer to the Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices.

Rule 9(3) and (4)

Time limits for refusal

A refusal of protection must be notified to the International Bureau within a prescribed time limit. Any refusal sent after the expiry of that time limit will not be considered as such by the International Bureau (refer to “Calculation of time limits”).

Rules 18 and 19(1)(a)(iii)

As a matter of principle, the time limit for the notification of a refusal is six months from the date of publication of the international registration.

Rule 18(1)(a)

However, any Contracting Party to the 1999 Act whose Office is an Examining Office or whose law provides for opposition proceedings may declare that, for international registrations in which it is designated under the 1999 Act, the time limit of six months is replaced by a time-limit of 12 months.

Rule 18(1)(b)

In order to determine whether a notification of refusal of protection meets the applicable time limit, it is the date of sending of the notification of refusal, by the Office concerned, which is decisive. In the case of a notification of refusal sent by mail, the date of sending is determined by the postmark. If the postmark is illegible or missing, the International Bureau will treat the notification as having been sent 20 days before the date on which it was actually received by the International Bureau; if, however, this date would be earlier than the date of any refusal or date of sending mentioned in the notification, the notification will be treated as having been sent on the latter date. In the case of a notification sent through a delivery service, the date of sending will be determined on the basis of the information recorded by the delivery service.

A.I. Section 501

Procedure for refusal of protection

A notification of refusal must relate to only one international registration. It must also be dated and signed by the Office making the notification.

Rule 18(2)(a)

Contents of the notification

A notification of refusal must contain the following information and indications:

• the Office making the notification;
• the number of the international registration;
• all the grounds on which the refusal is based, together with a reference to the corresponding essential provisions of the law;
• if the grounds refer to similarity with a design that is the subject of an earlier national, regional or international application or registration, all relevant data concerning that design, including the filing or registration date and number, the priority date (if any), a copy of a reproduction of the earlier design and the name and address of the owner of the design in question¹;
• if the refusal does not concern all the designs that are the subject of the international registration, those to which it does or does not relate;
• if the refusal may be subject to review or appeal, the time limit, reasonable under the circumstances, for filing a request for review of, or appeal against, the refusal, and the authority to which such request for review or appeal lies; if such request for review or appeal must be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal, this should also be indicated. In such a case, the requirements for appointment of a representative is governed by the law and practice of the Contracting Party concerned; and
• the date on which the refusal was pronounced.

Rule 18(2)(b)

A refusal must state the grounds on which it is based in order to enable the holder to assess the appropriateness of challenging these grounds in a review or appeal procedure before the Office or other authority concerned.

A refusal may also indicate a possible remedy concerning a refusal ground, for example, where the refusal ground is that all the designs in the international registration are not in conformity with the requirement of unity of design under the law of the designated Contracting Party, the Office of that Contracting Party may indicate which designs conform to the same concept of unity of design, as required under its law, and give instructions on the possible division of the international registration before that Office.

The requirement to state in the notification of refusal all grounds on which the refusal is based does not prevent new grounds from being raised subsequently during the procedure before the Office, even after expiry of the time limit for refusal, as a result of the holder’s reaction to the refusal, or during an appeal procedure lodged by the holder, since the latter is informed of those grounds under the procedure in question.

Recording and publication of the refusal: transmittal to the holder

A refusal of protection is notified to the International Bureau by the Office of the Contracting Party concerned. The International Bureau records such refusal in the International Register (unless it is not considered as such; refer to “Irregular notifications of refusal”), publishes it in the Bulletin, and transmits a copy of the notification to the holder of the international registration concerned.

Rule 18(2)(b)

Language of the notification of refusal

The refusal may be notified to the International Bureau in English, French, or Spanish, at the option of the Office making the notification. The refusal is recorded and published. The holder receives from the International Bureau a copy of the notification of refusal, in the language in which it was sent by the Office of the designated Contracting Party.

Irregular notifications of refusal

There are two kinds of irregular refusals, those which can be remedied and those which entail that the notification of refusal is not considered as such by the International Bureau.

A notification of refusal is not regarded as such by the International Bureau (and is therefore not recorded in the International Register) if:

• it does not contain an international registration number (unless other indications contained in the notification permit the International Bureau to identify the international registration concerned);
• it does not indicate any grounds for refusal; or
• it was sent to the International Bureau after the expiry of the applicable refusal period (six months or 12 months, as the case may be; refer to “Time limits for refusal”).

Rule 19(1)(a)

In all three cases, the International Bureau nevertheless transmits a copy of the notification to the holder and informs him/her (and at the same time the Office that issued it) that it does not regard the notification of refusal as such, and indicates the reasons therefor.

Rule 19(1)(b)

It is useful for the holder of the international registration to receive from the International Bureau copies of such notifications of refusal (even if they have not been regarded as such, and consequently have not been recorded in the International Register), because this holder should be aware of potential grounds of refusal in the Contracting Party concerned. For example, a third party might initiate an invalidation action against the designation, based on the same grounds as were cited by the Office in the defective notification of refusal.

If the notification is irregular in other respects (for example, it is not signed by the Office or it does not indicate the date of refusal), the International Bureau nonetheless records the refusal in the International Register and transmits a copy of the (irregular) notification to the holder. If the holder so requests, the International Bureau invites the Office concerned to rectify its notification without delay.

Rule 19(2)

Where an Office rectifies a notification of refusal that specified a period for requesting review or appeal, it should also, where appropriate, specify a new period (for example, starting from the date on which the rectified notification was sent to the International Bureau), preferably with an indication of the date on which the new time limit expires.

Procedure following notification of refusal

Where the holder of an international registration receives, through the International Bureau, a notification of refusal, he/she has the same rights and remedies (such as review of, or appeal against, the refusal) as if the design had been filed directly with the Office that issued the notification of refusal. The international registration is, therefore, with respect to the Contracting Party concerned, subject to the same procedures as would apply to an application for registration filed with the Office of that Contracting Party.

60 Article 8(3); 99 Article 12(3)(b)

When lodging a request for review or an appeal against a decision of refusal or responding to an opposition, the holder may, even if this is not required by the law of the Contracting Party concerned, find it useful to appoint a local representative who is familiar with the law and practice (and the language) of the Office that pronounced the refusal. The appointment of such a representative is entirely outside the scope of the Hague Agreement and the Common Regulations, and is governed by the law and practice of the Contracting Party concerned.

In the case that the Office has issued a notification of refusal on the ground that the designs do not conform with the requirement of unity of design under its law, the holder of the international registration may divide the international registration before the Office concerned in order to overcome the grounds for refusal (refer to "Grounds for refusal" and "Contents of the notification"). The Office is entitled to charge the holder of that registration as many additional fees as divisions prove necessary. The mode of payment of additional fees of this type is not governed by the Hague System; they will be specified by each Contracting Party concerned, which will collect them directly from the holder of the international registration. Hague System Member Profiles database may be consulted to find more about the procedure following a notification of refusal on the ground that the designs do not conform to the requirement of unity of design before the Office concerned.

1. In the event of a refusal based on similarity with a design that is the subject of an earlier registration that has not been published (in particular because deferred publication has been requested), the Office will not be able to provide the data concerning the conflicting earlier design since it is required to keep the copy of that earlier registration secret. In such case it will have to indicate in its notification, as ground for refusal, similarity with an earlier unpublished registration. The holder of the later international registration should receive the detailed contents of the earlier registration once publication has taken place. The time limits applicable to a possible appeal against refusal would be set accordingly.^↑