WIPOD – Design Talks: Transcript of Episode 2

Start your journey of using the Hague System

Sarah Lucek: Hello and welcome to Design Talks, a new podcast brought to you by the Hague System, the international mechanism for registering designs at the World Intellectual Property Organization!

I'm Sarah, your host.

In our previous episode, we looked at what industrial designs are and how they influence our daily lives. We also highlighted the importance of protecting designs. Today, we're diving deeper into the world of international design protection and taking an even closer look at international design application and protection. Joining us for this exploration is our guest, Mr. Jonah Asher, Coordinator of the Hague Infoline Unit at the World Intellectual Property Organization.

Hello Jonah, we are very happy to have you here! Could you introduce yourself and explain your role in the Hague Registry?

Jonah Asher: Thank you very much, Sarah. It's a pleasure to be here today. It's really nice to be, I guess, the first guest, I'm honored. As you mentioned, yes, my name is Jonah and I have been working in the Hague registry for about seven years now. My work primarily is with the Hague Infoline Unit.

Now, you may be wondering what is the Hague Infoline Unit? Well, let's say you want to use the Hague system. You want to find out a little bit about it, but you're not sure about some of the legal procedures. You're not sure how to fill out your application form. You need some help, you have some questions.

Well, we have a lot of information available on our website, but of course, we have real people there to help you if you have any questions along the way. Not only when you start or prepare for your application, but also when you are on your journey to receiving your international design registration. So, if you want to know the status, if you want to renew your registration, anything like that, we can help you. So, the Hague Infoline Unit is really all about customer service. It's about helping users of the Hague System make the most of it and be successful.

Sarah Lucek: Wow, you mentioned seven years within the Hague Registry. What do you like most about your job at the Hague Registry?

Jonah Asher: Yeah, the years go by very fast, and that's a good sign because I do love my job here. The most interesting thing, I think, is the variety and the designs and the people that we are helping.

I really think one of the most interesting aspects of IP actually is designs. These are the things that we touch and use every day. Think about it if you want to buy something. You want to buy a piece of clothing or a bag or you're looking at a new car. A lot of those things I would argue that really touches us and makes us want to buy something beyond the technical features is how it looks. And that's all about designs. And they go so far, a lot farther than you may think.

You know, when you're having your coffee at a cafe with a coffee cup, that could be a protected design. All kinds of things that you might never know. A lot of us probably have traveled recently, and maybe you have ever stayed at some of these kind of Airbnb places or these places where you, you know, it's not a hotel, but you rent somebody's apartment. And how do you get in? Well, a lot of times you might see that there is a lock and you have a code. This is actually something that is protected with designs, and actually even there's a company that has protected it with the Hague System. And this has allowed them to expand beyond their local market.

Designs really are everywhere. They're all around us. They're helping people from SMEs to individual designers to the big companies, of course, be successful internationally. And that's my favorite thing about this job, is helping those people achieve success.

You know, a lot of people may not know that WIPO is a specialized agency of the United Nations. We're one of the, I think it's like 17 or 18 specialized agencies. And United Nations goals are also WIPO goals. And that's another thing that I really hold close to my heart and that I know I'm working here and I'm working towards achieving those goals.

You know, for example, you see a lot of the SDGs, like SDG 13 about climate action. We have WIPO GREEN for that. We have SDG 4, which is about quality education, and in that we have the Accessible Books Consortium, which is really cool, it helps people get more access to books like those written in Braille.

And then we have, of course, SDG 9, which is a big one. It's about innovation, infrastructure. We have things like the Technology Information Support Centers that provide on-the-ground IP information and support to inventors. And also, something that's really cool, the Inventor Assistance Program, which matches developing country inventors with patent attorneys who can provide free patenting legal advice. So, this is one thing I also really hold dear, and one thing I love about working here is that we're not only just about helping people get their design rights, but we're also about helping people achieve socioeconomic development all around the world.

Sarah Lucek: Thank you, Jonah. That's very interesting. And you mentioned varieties. How many designs are being protected every year?

Jonah Asher: Well, thanks very much. Yeah, if you want to look internationally, those who are using what I think was discussed previously in the previous episode about the direct route, which is also known as the Paris route. I mean there are millions of designs throughout the world that are being protected every year. Millions and millions.

In terms of Hague System registrations, so for 2022, we had around 8,000 international applications. That's a 19% increase over the previous year. Now, not all international applications are actually registered. There might be a problem with them. So, among those 8,000, we had 7,700 registrations approximately. That was a 26% increase over 2021. Within those 7,700 registrations, there were over 32,000 designs that were registered. That's a big number. And we expect this to grow in 2023. We don't have our statistics out yet. It's not the end of the year as we are recording this, but we expect it to increase about by 8% in terms of both applications and registrations.

Now really, the Hague System offers people an opportunity to protect their designs very broadly throughout the world. So not only in terms of the geographical scope, but what they are protecting.

So, we have things protected under the Hague System from car accessories to fashion items, even wind turbines, for example. I think probably one of the things we use the most every day, I would guess, it's probably our phones. And the phone that you're holding, your cell phone, your mobile phone… I think I'm letting my age through a little bit there when I say cell phone… but your mobile phone, the shape of it, the designs are protected. The graphical user interface inside is protected. Companies like Samsung and Apple protect these designs.

You make your coffee in the morning, you use your coffee maker, maybe it's from Phillips or other big companies, these are protected. Some of the coolest sports cars, maybe if you're a fan of sports cars like Ferrari. These are designs that are protected. Even, I don't know, Sarah, if you've seen it, some restaurants recently, they have these robots that will come around and pick up your dishes and put them away and deliver your food. Things like these, are also protected to the Hague System. You have drones, airplanes, even rockets. So, it's so diverse, it is really amazing what you can protect and where you can protect it.

Sarah Lucek: Thank you, Jonah. That's very interesting. So, let's start with the very basics. Who can use the Hague System?

Jonah Asher: Yeah, sure. Thanks. So, there are basically three kinds of scenarios in which you could use the Hague System.

So, if you are a national of a member of the Hague System. This includes places like international bodies like the European Union or the African International Intellectual Property Organization. So, if you are a national of any of these countries, you can use the Hague System.

You can also use the Hague System if you have a residence or domicile in one of these countries. So, maybe you are not a national of a member country, but you have a residence in one. So, then you could use it.

The other avenue is if you have a, it's kind of the official term, it's a little bit long, you have a real and effective industrial or commercial establishment. Basically, this means, do you have a company, maybe a subsidiary, are you selling some products or something in a member? In that case, then you could also use the Hague System.

Sarah Lucek: So basically, if you are a national of a contracting party, or if you have a domicile or a habitual residence, or if you have a real and effective industrial or commercial establishment in a contracting party, you can use the Hague System. But what exactly is a contracting party?

Jonah Asher: That's a good question, and actually that's the kind of question we get a lot at the Hague Infoline Unit when people are thinking about using the Hague System. So, we have to refer to contracting parties because a contracting party is not just a country. In most cases it is, it's a country, but in other cases it's an intergovernmental body like the European Union or the African Intellectual Property Organization, or Benelux. So, these can also be members of the Hague System. So, this is why we call them contracting parties.

Recently, we had a new contracting party who joined this year, which is Brazil. It's a great expansion of the Hague System in South America. And we've really been experiencing significant and rapid growth of the Hague System. Over the past 10 years, the Hague System has grown in terms of contracting parties. So, the number of contracting parties has grown by over 30%.

Now maybe you're thinking, wait a minute, 10 years, only 30%, isn't that too long? Well, I mean it actually is really fast because when you think about it, if a country wants to join, or an intergovernmental body wants to join, they have to modify their laws perhaps. They have to change a lot of their procedures to come in line with the Hague System. It's not a quick process by nature.

So, the fact that we have increased by 30% in the past 10 years is really amazing, and we look forward to continued growth like this in the next 10 years. In fact, in the next year or two, we hope to have India and Saudi Arabia also join the Hague System.

Sarah Lucek: Thank you, Jonah. Now that we know who can use the Hague System, let's look at how much it costs.

Jonah Asher: Sure. So, there are a number of fees for the Hague System. I'm not gonna go through all of the fees because you can find a list on our website. We have a standard application fee. It's under 400 Swiss francs. And then we have other fees, you know, depending on the number of words and your description and other things. But overall, it is a very cost-effective System to protect your designs internationally.

I think we saw that in the last podcast, we went over this a bit. On average, I would say you can expect, if you don't have a huge amount of designs and reproductions, let's say you have one or two designs, maybe around 10 reproductions, depending on your designations, you can expect to save probably about 15%.

There's a big financial advantage to using the Hague System though, not just on the fees, because if your entitlement, if you have an entitlement, this is going back to the contracting party. So, if you have an entitlement within a least developed country, all of the fees are reduced to only 10% of the prescribed amounts.

So, this makes it a very accessible System for those from least developed countries to use and to access international markets to sell their products overseas, compared to using, you know, direct routes where there are likely not such discounts.

But in addition to this as well, many times if you want to use the direct route, like the Paris route, you would need to have a lawyer in the country that you are designating. So, you want to designate country A, well, you need to get a local representative, a lawyer, and you need to pay them a bunch of money, and you have to go through them to file your application.

The great thing about the Hague System is that you don't need that at the time of filing. Anybody can file, you don't have to be a lawyer. You can be sitting on a beach, drinking a coffee, or a cold drink, probably better to drink a cold drink, and use the Hague System. It doesn't matter who you are or where you are, and it saves you a lot of money not needing to use a local representative. So, it's a very cost-effective system overall.

Sarah Lucek: This actually reminds us of one of the three E's we discussed in episode 1. Easy, efficient and economical, right? So how does it work? How can one file an application?

Jonah Asher: You have a few routes to file. Now, the one way you could do is you could download our paper form, you could fill it out all by hand, and you could send it to us. We highly recommend you do not do that, because there's a lot of disadvantages. You won't have access to things online. You won't be able to view your status. Everything will be slower. We really recommend you don't do that.

Another option, depending on the country, most of the contracting parties allow this is if you want to file indirectly. That means if you want to file through your office. But again, this can increase the cost. Usually, contracting parties charge a fee for indirect filing. Also, it increases the costs on our side because if we receive papers, there's additional fees.

So instead of doing these ways of filing, the best way is to file online through eHague. So, this is what is known as our digital gateway to international design protection. And it allows you to secure and manage your design rights simultaneously in multiple countries, quickly, easily, and through a secure and intuitive interface.

So, all you need to use eHague, you need to go to WIPO's website. You click if you go into the menu you click on protect and manage and select eHague under industrial design protection and then you log and go through the process. You need to make an account with us. We call it a WIPO account. So, if you don't already have one you need to do that. It's a quick, you know less than five minutes and then you can go ahead and make your application.

After you file your application and submit it to us. We have a very strong team of dedicated examiners that will go through and view your application. And then if there are any problems with your application, they'll send you an email notification and you can follow up directly with the examiner. Just one point about the filing languages. So, the official languages of the Hague System are English, French, and Spanish. Make sure that you choose the correct one when you file because all of the communication that you'll receive subsequently, will be in that filing language.

Sarah Lucek: Thank you, Jonah, for these very interesting details. After filing an application, Jonah, what happened next?

Jonah Asher: Sure, so I briefly mentioned that just a second. But after you file your application, it will be submitted to our team of examiners. And one thing I want to point out that I forgot to mention before is the great thing about filing with eHague is that you won't be able to make any mistakes that would cause an irregularity to be issued that would delay the application date. So, if you filed by paper, for example, and you forgot to indicate a creator of the design, if that is required by one of the contracting parties you designated, you would get an irregularity letter from the examiner and then the application date would be the date that you fixed the irregularity.

But if you use eHague, it's impossible to do that. The examiner will take a look at the formality examination of it. It's not substantive. We're not looking at: Is your design unique? Is there no other design like that? That is under the purview of the individual contracting parties. We're basically making sure, you know, did you cross all your t's, dot all your i's, everything's okay. If you designated Country A and Country A requires a description, did you include that?

So, if you use eHague, you'll make sure that you won't, you know, have any of those irregularities that would make your filing date later. And then the examiner will check, make sure everything's okay. If they need information from you, they will send you an email. You can follow up with them.

And then once your application is registered, it will be published in the International Designs Bulletin. This is our weekly publication, where all of the Hague System registrations are published. And then you will receive, of course, a registration certificate. And then your registration will have five years of protection. And then after the five years are up, you can decide whether you'd like to renew it or not.

Of course, you know, there are a lot more details in this process that I don't want to go too in depth on right now. You can take a look on our website to find out every step and of course you can contact the Hague Infoline Unit if you have a question.

Sarah Lucek: Thank you, Jonah. Is there anything more you'd like to tell our listeners?

Jonah Asher: Well, I think that we learned from the last podcast how important it is to protect your designs. You know, we're not talking about the Hague System, but just designs. You know, protecting your designs can bring you a return on investment, more opportunities for things like licensing, make you and your company more competitive. So, it's really an important aspect of intellectual property.

And then when you're ready to take your designs abroad, take a look at the Hague System. It can be one of the most, the easiest economical and what was the third E again? Efficient, that's right, efficient. Efficient ways to protect your design internationally. So, I would just urge you to take a look.

And also, for those of you who might be listening from a least developed country, it can really benefit you if you are thinking about releasing your product abroad, you're thinking about using IP, and you have a great design. Applicants in these countries can really enjoy a very, very, very cheap, cost-effective way to use the Hague System and to increase their chances of success abroad.

Sarah Lucek: Thanks so much Jonah for joining us today, and thanks to our listeners for tuning into Design Talks, a production of the World Intellectual Property Organization, brought to you with the support of the Funds in Trust Japan Industrial Property Global. I hope that today’s episode has helped you understand more about how the Hague System works and how to file an international application.

Stay tuned for our upcoming episodes where we will be interviewing designers and sharing their inspiring stories.

In the meantime, continue to let your creativity flow. Remember the wise words of the writer and poet Maya Angelou, "You can't use up creativity. The more you use, the more you have!"