Introduction
The Guide
This is a Guide to the international registration of industrial designs. The Hague System for international registration of industrial designs is based on the Hague Agreement Concerning the International Registration of Industrial Designs, which is constituted by two different Acts, namely:
- the Geneva Act (1999), hereinafter referred to as the 1999 Act, which was adopted on July 2, 1999, and entered into force on December 23, 2003, and
- the Hague Act (1960), hereinafter referred to as the 1960 Act, which was adopted on November 28, 1960, and entered into force on August 1, 1984.
The London Act (1934) of the Hague Agreement Concerning the International Deposit of Industrial Designs, which was adopted on June 2, 1934, and entered into force in June 1939, was terminated on October 18, 2016, in accordance with the decision taken by the 15 Contracting Parties to that Act, namely, Benin, Côte d'Ivoire, Egypt, France, Germany, Indonesia, Liechtenstein, Monaco, Morocco, the Netherlands, Senegal, Spain, Suriname, Switzerland and Tunisia, at their Extraordinary Meeting on September 24, 2009 (refer to “Termination of the 1934 Act”). This Guide therefore focuses on the 1960 and 1999 Acts.
The application of the 1960 and 1999 Acts is supplemented by the Common Regulations and the Administrative Instructions.
The system for international registration of industrial designs is referred to as “the Hague System”.
This Guide is structured as follows:
- The “Introduction” includes explanations as to how a State or an intergovernmental organization may become a Contracting Party to the Hague Agreement and provides an outline of the various declarations and notifications that may be made under the Hague System.
- "General" covers communications with the International Bureau, calculation of time limits, languages, payment of fees to the International Bureau and representation before the International Bureau.
- The “International procedure (1999 and 1960 Acts)” deals with the international registration procedure and other procedures required for the recording of events which may affect an international registration (such as changes in ownership, refusals of protection, etc.).
Wherever possible, the provisions of the 1999 and 1960 Acts, the Common Regulations and the Administrative Instructions that are relevant to a particular paragraph of the Guide are cited underneath that paragraph. Such provisions are cited in the following manner:
- “99 Article xx” refers to an Article of the 1999 Act;
- “60 Article xx” refers to an Article of the 1960 Act;
- “Rule xx” refers to a Rule of the Common Regulations; and
- “A.I. Section xx” refers to a Section of the Administrative Instructions.
The Hague System: general overview
In simple terms, the Hague Agreement offers the possibility of obtaining protection for industrial designs ("designs") in several Contracting Parties by means of a single international application filed with the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Thus, under the Hague System, one international application replaces a whole series of applications which would otherwise have to be filed with different national offices.
The Hague System is administered by the International Bureau of WIPO. The International Bureau maintains the International Register and publishes the International Designs Bulletin (I.D.B.).
The paragraphs below are intended only to represent a broad outline of the international procedure under the 1999 and the 1960 Acts. For more details concerning each of the matters concerned, refer to “International procedure”.
Who may use the System?
The entitlement to file an international application under the Hague Agreement is limited to natural persons or legal entities having a real and effective industrial or commercial establishment, or a domicile, in at least one of the Contracting Parties to the Hague Agreement, or being a national of one of these Contracting Parties, or of a member State of an intergovernmental organization that is a Contracting Party.
In addition, but only under the 1999 Act, an international application may be filed on the basis of habitual residence in a Contracting Party.
The Contracting Party with respect to which the applicant fulfills the above condition is referred to as the “State of origin” under the 1960 Act and the “applicant’s Contracting Party” under the 1999 Act.
No prior national application or registration
The filing of an international application does not require any prior national application or registration. Protection for a design can therefore be applied for at the international level through the Hague Agreement for the first time.
Contents of the application
A single international application may comprise several different designs (“multiple application”), up to a maximum of 100. All designs included in the same application must, however, belong to the same class of the international classification of Locarno. In other words, the international application is “monoclass”.
60 Article 5; 99 Article 5; Rule 7
An international application must be filed, either through the eHague interface or by using the official application form (DM/1), made available by the International Bureau or on the website of the Office of a Contracting Party. An international application must contain, inter alia, a reproduction of the design concerned, together with the designation of the Contracting Parties in which protection is sought. It must be filed in English, French, or Spanish.
An international application is subject to the payment of three types of fees: a basic fee, a publication fee and, in respect of each Contracting Party where protection is sought, either a standard or an individual designation fee. As regards standard fees, a three-level structure of standard fees applies, reflecting the level of examination carried out by the Office of a Contracting Party.
60 Article 15; 99 Article 7; 99 Article 5(1)(vi); Rule 12
Transmitting the international application to the International Bureau
An international application is normally sent directly to the International Bureau by the applicant, in which case either the eHague interface or the official application form (DM/1) may be used. Under the 1960 Act, however, a Contracting Party is entitled to require that, where it is considered to be the State of origin, the application be filed through its national Office. In that case, only form DM/1 may be used.
Formal examination by the International Bureau
Upon receipt of the international application, and payment of at least the basic fee for one design, the International Bureau checks that it complies with the prescribed formal requirements. The International Bureau does not appraise or concern itself in any way with the novelty of the design and it is therefore not entitled to reject an international application on this or any other substantive ground.
Publication
An international application that complies with the prescribed formal requirements is recorded in the International Register and, in due course, published in the I.D.B. This weekly publication takes place electronically on the WIPO website every Friday and contains all the relevant data concerning the international registration, including a reproduction of the designs. The date on which each issue of the Bulletin is made available on the WIPO website is communicated electronically by the International Bureau to the Office of a Contracting Party, if the latter wishes to receive the said communication.
Substantive examination by the Office of each designated Contracting Party: possibility of notifying a refusal of protection
Upon publication of the international registration in the I.D.B., the Office of each designated Contracting Party can proceed with the substantive examination, if any, provided for by its own legislation. As a result of that examination, the Office may notify to the International Bureau a refusal of protection for its territory. However, an international registration may not be refused on grounds of non-compliance with formal requirements, since such requirements must be considered satisfied following the examination carried out by the International Bureau.
60 Article 8(1); 99 Article 12(1)
A refusal of protection, if any, must be notified to the International Bureau within six months from the date of publication of the international registration. Under the 1999 Act, however, any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is replaced by a period of 12 months.
60 Article 8(2); 99 Article 12(2); Rule 18(1)
In the event of notification of a refusal, the holder has the same remedies as he/she would have if he/she had filed the application in question directly with the national Office concerned.
60 Article 8(3); 99 Article 12(3)
If the holder contests the refusal, the ensuing procedure devolves exclusively at the national level, according to the requirements and procedures provided for by the applicable domestic legislation. The International Bureau is not involved in this procedure. An appeal against a refusal of protection must be submitted to the competent authorities of the Contracting Party concerned within the time limit and in accordance with the conditions laid down in that Contracting Party’s own legislation.
Statement of grant of protection
The Office of a designated Contracting Party which has not communicated a notification of refusal may, within the applicable refusal period, send to the International Bureau a statement to the effect that protection is granted to the designs that are the subject of the international registration in the Contracting Party concerned.
However, no legal consequences result from the fact that such a statement of grant of protection has not been sent by an Office. It remains the case that the designs that are the subject of the international registration are protected if no notification of refusal has been sent within the applicable refusal period.
Protection governed by domestic law
In each designated Contracting Party, where the Office has not communicated a refusal (or has subsequently withdrawn its refusal), the international registration produces the same effect as a grant of protection for a design under the law of that Contracting Party.
Duration of protection
International registrations are valid for an initial period of five years. They can be renewed for one or more additional periods of five years, in respect of each designated Contracting Party, up to the expiry of the total term of protection allowed by those Contracting Parties’ respective laws. In other words, the maximum duration of protection in each designated Contracting Party corresponds to the maximum duration provided for by the law of that Contracting Party.
Changes in the International Register
The following changes may be recorded in the International Register:
- a change in the name or postal address of the holder or his/her representative (refer to “Change in the name and/or address of the holder” or "Change in the name and/or address of the representative");
- a change in the ownership of an international registration (in respect of all or only some of the designated Contracting Parties and in respect of all or some of the designs included in the registration) (refer to “Change in ownership”);
- a renunciation of all the designs that are the subject of the international registration, in respect of any or all of the designated Contracting Parties (refer to “Renunciation”);
- a limitation of some of the designs that are the subject of the international registration, in respect of any or all of the designated Contracting Parties (refer to “Limitation”).
Requests for such recordings must be presented to the International Bureau on the relevant official forms and must be accompanied by the prescribed fees. The recording of any change concerning the representative is, however, free of charge.
60 Article 12(1); 99 Article 16(1); Rule 21
Advantages of the Hague System
The Hague System of international registration arose from a need for simplicity and economy. In effect, it enables design owners originating from a Contracting Party to obtain protection for their designs with a minimum of formality and expense.
In particular, design owners are relieved from the need to make a separate national application in each of the Contracting Parties in which they require protection, thereby avoiding the complexities arising from procedures which may differ from State to State. Thus, they do not have to file documentation in various languages, nor keep a watch on the deadlines for renewal of a whole series of national registrations, varying from one State to the other. In addition, they avoid the need to pay fees in various currencies. Under the Hague Agreement, the same result can be obtained by means of a single international application, in one language, accompanied by the payment of a single set of fees, in one currency and with one Office (the International Bureau).
Moreover, by having a single international registration with effect in several Contracting Parties, the subsequent management of the protection obtained is also considerably facilitated. For instance, a change in ownership, or in the name or address of the holder, can be recorded in the International Register and have effect in all the designated Contracting Parties, by means of one simple procedural step.
Becoming party to the Hague Agreement
The 1999 and the 1960 Acts of the Hague Agreement are autonomous and totally independent of each other. Each Act consists of a fully-fledged international treaty, so that (with the exception of intergovernmental organizations) a potential Contracting Party may decide to become party to either one of the Acts, or to both.
States
To become a Contracting Party to the 1960 Act, a State must be bound by the Paris Convention for the Protection of Industrial Property.
To become a Contracting Party to the 1999 Act, a State must be a member of the Convention Establishing WIPO. While it is not required that the State also be party to the Paris Convention, any State that is a Contracting Party to the 1999 Act is, however, required under Article 2(2) of that Act to comply with the provisions of the Paris Convention which concern designs (even if that State is not boundby the Paris Convention).
Intergovernmental organizations
An intergovernmental organization cannot become party to the 1960 Act, the membership of this treaty being open to States only.
On the other hand, such organization may become party to the 1999 Act, provided the following conditions are fulfilled:
- at least one of the member States of the intergovernmental organization is a member of WIPO, and
- the organization maintains an Office through which protection of designs may be obtained with effect in the territory in which the constituting treaty of the intergovernmental organization applies.
The expression “Contracting Party” includes any State or intergovernmental organization which is Party to the 1999 Act and/or the 1960 Act.
Instruments of ratification or accession must be deposited with the Director General of WIPO. The Director General notifies all Contracting Parties of any deposits of instruments of ratification of, or accession to, the Act to which they are a party, and of any declarations which are included in such instruments, or made at a later stage.
Entry into force of the 1999 Act and the 1960 Act with respect to a given Contracting Party
As regards the 1960 Act, the accession or ratification of a given Contracting Party enters into force one month after its instrument of ratification or accession has been notified by the Director General of WIPO to the other relevant Contracting Parties, unless a later date is indicated in the instrument.
As far as the 1999 Act is concerned, the accession or ratification of a given Contracting Party becomes effective three months after the date on which its instrument of ratification or accession has been deposited with the Director General of WIPO, or at any later date indicated in that instrument.
However:
- in respect of States for which protection of designs can be obtained solely through the Office maintained by an intergovernmental organization1, the deposit of an instrument of ratification or accession cannot become effective before the date of deposit of the instrument of the intergovernmental organization to which those States belong, and
- with regard to States which have made a declaration to the effect that a common Office will act as national Office for all of them2, the 1999 Act and/or the 1960 Act enters into force three months or one month, as the case may be, from the date on which the last instrument of the Member States of that group of States has been deposited.
A prospective Contracting Party wishing to ensure that it will not be bound by the 1999 Act unless one or several other Contracting Parties are also bound by that Act, may conditionally ratify or accede to that Act. In such case, the ratification or accession takes effect only if, and when, one or several other Contracting Parties, expressly designated, also deposit their instruments of ratification or accession. The conditional instrument of ratification or accession is then deemed to have been deposited on the day on which that condition is satisfied (namely, the day on which the other Contracting Party(ies) concerned deposit(s) its (their) instrument(s) of ratification or accession).
The date on which each Contracting Party became bound by the 1999 Act and/or the 1960 Act can be found in the list of members of the Hague Agreement3.
Determination of which Act is applicable in respect of the designation of a given Contracting Party
To the extent that one and the same Contracting Party may be bound by either one or both Acts of the Hague Agreement (the 1960 Act and/or the 1999 Act), the question arises as to which of these Acts applies in respect of a given Contracting Party designated in an international application.
The Act applicable to a designated Contracting Party depends on the Act(s) to which are bound, on the one hand, the Contracting Party of the applicant and, on the other, the given designated Contracting Party. The applicable principles may be summarized as follows:
- where there is only one common Act between the two Contracting Parties concerned, it is such Act which governs the designation of a given Contracting Party. For example, if an applicant originates from a Contracting Party bound by both the 1999 and the 1960 Acts and designates a Contracting Party bound exclusively by the 1960 Act, such designation is governed by the single common Act (the 1960 Act);
60 Article 31(2); 99 Article 31(2)
- where both Contracting Parties concerned are bound by more than one common Act, it is the most recent Act which applies with respect to the designated Contracting Party. For example, if an applicant originates from a Contracting Party bound by both the 1960 and the 1999 Acts and designates a Contracting Party also bound by both the 1960 and the 1999 Acts, such designation is governed by the more recent Act (the 1999 Act).
60 Article 31(1); 99 Article 31(1)
It should be noted that, in line with the aforementioned principles, the designation of a Contracting Party bound by several Acts will also be governed by the most recent of these Acts where the applicant enjoyed cumulative but independent entitlement connections under each of the same Acts (refer to “Entitlement to file”). For example, if an applicant originates from Contracting Party A, bound by the 1960 Act, but Contracting Party A is also a State member of an intergovernmental organization bound by the 1999 Act (Contracting Party B), the designation of a Contracting Party C that is bound by both the 1960 and the 1999 Acts is governed by the most recent of these two Acts, that is, the 1999 Act.
The determination of the applicable Act is to be made on the date of filing of the international application concerned. It cannot be reviewed afterwards, should one of the Contracting Parties concerned accede to another Act of the Hague Agreement subsequent to the filing of the international application.
Determination of the Act or Acts which govern an international application as a whole
While the designation of a Contracting Party can only be governed by one Act, several Acts may, however, apply in respect of a single international application. This depends on whether, in respect of any given international application, Contracting Parties have been designated under the 1999 Act and/or the 1960 Act.
It is important for an applicant to know which Act or Acts govern(s) the international application, since this will determine such matters as the possibility of requesting deferment of publication, and the fees which are payable.
In all, three kinds of international application will be possible. An international application may be governed:
- exclusively by the 1999 Act, i.e., all the Contracting Parties designated in the international application have been designated under the 1999 Act;
- exclusively by the 1960 Act, i.e., all the Contracting Parties designated in the international application have been designated under the 1960 Act;
- by both the 1999 and the 1960 Acts, i.e., the Contracting Parties designated in the international application include
- at least one Contracting Party designated under the 1999 Act, and
- at least one Contracting Party designated under the 1960 Act.
These rules may be illustrated with the following example: an applicant originates from a Contracting Party bound by both the 1999 Act and the 1960 Act and it is assumed first of all that the applicant designates in his/her international application Contracting Parties “A”, “B” and “C”, all of which are bound by the 1999 Act. To the extent that each of these designations is governed by the 1999 Act (the most recent Act), it follows that the international application as a whole is governed exclusively by the 1999 Act.
If, in respect of the same international application, the applicant also designates Contracting Party “D” which is bound only by the 1960 Act: the designation of that Contracting Party “D” is governed by the 1960 Act (the single common Act), and it follows that the international application concerned is governed by both the 1999 Act and the 1960 Act. In other words, with respect to that international application, the 1999 Act applies in respect of Contracting Parties “A”, “B” and “C” and the 1960 Act applies in respect of Contracting Party “D”.
Declarations by Contracting Parties
The Hague System provides for the possibility for Contracting Parties to make certain declarations concerning the operation of the international registration system so that certain features of their national/regional laws concerning design protection can be taken into account when they are being designated in an international application. For a complete list of possible declarations a Contracting Party may make under the 1999 Act or the Common Regulations, please refer to “Declarations Made by Contracting Parties under the 1999 Act and the Common Regulations under the 1999 Act and the 1960 Act”.
It is to be noted that although the prerequisite for making certain declarations is that the Office of the Contracting Party is an “Examining Office”, there is no obligation under the Hague System to make any of those declarations.
More specific information in respect of the specific elements of the international application and procedures before the International Bureau that result from declarations being made by designated Contracting Parties is provided under “Contents of the International Application”, “International Application” and “Effect of the Recording of a Change in Ownership”.
Examining Office
The term “Examining Office” is defined in the 1999 Act (Article 1(xvii)) and means an Office which ex officio examines applications filed with it for the protection of designs, at least to determine whether the designs satisfy the condition of novelty.
In light of the above definition, in order to be considered as an “Examining Office”, the Office must carry out, ex officio, a prior art search that matches with the condition of novelty required under the applicable law. This means that, if the criterion for the validity of the design right is worldwide novelty, the prior art search should consider not only pending and/or registered designs in a database but also extend to designs known anywhere in the world.
Submission of declarations
Declarations may be made either simultaneously with the deposit of the instrument of accession or ratification, or after the deposit. Before submission of the declarations to the Director General of WIPO, it is advised that the Legal Section of the Hague Registry be consulted to make sure that the requirements under the 1999 Act, the Common Regulations or the national law for making any declarations, respectively, are satisfied.
Effective date of declarations
If the declaration is submitted together with the instrument of ratification/accession, it becomes effective on the date on which the Contracting Party becomes bound by the 1999 Act. If the declaration is submitted afterwards, it becomes effective three months after the date of receipt of the declaration by the Director General of WIPO, or at any later date indicated in the declaration.
Furthermore, any declaration made after the deposit of the instrument of accession or ratification will apply only in respect of international registrations whose date of registration is the same as, or later than, the effective date of the declaration.
Mandatory declaration
Duration of protection – maximum duration of protection
Under the 1999 Act, an international registration is initially effected for a period of five years and may be renewed for two additional terms of five years (Articles 17(1) and (2)). Thus, under the 1999 Act, the minimum term of protection that a Contracting Party must provide is 15 years. If the national legislation of a Contracting Party provides for a duration of protection that is longer than 15 years, then the international registration may be renewed with respect to such Contracting Party for additional periods of five years, up to the expiry of the total duration of protection at the national level.
On acceding to the 1999 Act, a Contracting Party must notify the Director General of WIPO of the maximum duration of protection provided for by its law.
99 Article 17(3)(c); Rule 36(2)
Declarations that are mandatory in certain circumstances
Deferment of publication
Deferred publication for a period that is less than the prescribed period
Under the 1999 Act, the general principle is that each Contracting Party is assumed to permit the prescribed deferment period of 30 months from the filing date, or where priority is claimed, from the priority date of the application in question (Rule 16(1)(a)).
Where the law of a Contracting Party that is acceding to the Geneva Act provides for deferment of publication for a period that is less than the prescribed period of 30 months, that Contracting Party must, in a declaration, notify the Director General of WIPO of the allowable deferment period.
No deferment of publication
Where the law of a Contracting Party bound by the 1999 Act does not provide for the deferment of publication, that Contracting Party must, in a declaration, notify the Director General of WIPO of that fact.
Optional declarations
All optional declarations are listed below, some of which are open only to a Contracting Party whose Office is an “Examining Office”. Those declarations are namely:
- declaration under Article 5(2),
- declaration under Article 7(2),
- declaration under Article 13(1),
- declaration under Article 14(3),
- declaration under Article 16(2),
- declaration under Article 19(1),
- declaration under Rule 8(1),
- declaration under Rule 9(3),
- declaration under Rule 12(1)(c),
- declaration under Rule 13(4), and
- declaration under Rule 18(1).
The term “Examining Office” is defined in the 1999 Act (Article 1(xvii)) and means “an Office which ex officio examines applications filed with it for the protection of designs, at least to determine whether the designs satisfy the condition of novelty.
It is understood that, in light of the above definition, in order to be considered as an “Examining Office”, the Office must carry out, ex officio, a prior art search that matches with the condition of novelty required under the applicable law. This means that, if the criterion for the validity of the design right is worldwide novelty, the prior art search should consider not only pending and/or registered designs in a database but also extend to designs known anywhere in the world.
Prohibition on filing through national Office
In general, an international application may be filed, at the option of the applicant, either directly with the International Bureau or through the Office of the applicant’s Contracting Party. However, under the 1999 Act, any Contracting Party may, by declaration, notify the Director General of WIPO that international applications may not be filed through its Office. When such a declaration is made, all international design applications from applicants attached to that Contracting Party must be filed directly with the International Bureau.
Prohibition on self-designation
Under the 1999 Act a Contracting Party whose Office is an Examining Office may, by declaration, notify the Director General of WIPO that, where it is the applicant’s Contracting Party, the designation of that Contracting Party in an international application has no effect – in other words, it is prohibited to self-designate.
Security clearance
Any Contracting Party whose law, at the time that it becomes party to the 1999 Act, requires security clearance, may, in a declaration, notify the Director General of WIPO that the period of one month allowed for its Office to transmit an international application to the International Bureau shall be replaced by a period of six months.
Designation fees (declaration)
Individual designation fees
Any country that is acceding to the 1999 Act and whose Office is an Examining Office and any intergovernmental organization acceding to the 1999 Act, may notify the Director General of WIPO that, in connection with each international registration in respect of which it is designated, and in connection with the renewal of such international registration, it wishes to receive an “individual designation fee”, instead of a standard fee.
Pursuant to Rule 12(3), a declaration under Article 7(2) may specify that the individual designation fee to be paid in respect of the Contracting Party concerned comprises two parts, the first to be paid at the time of filing the international application and the second part to be paid at a later date which is determined in accordance with the law of the Contracting Party concerned.
The amount of the individual designation fee must not be higher than the equivalent of the amount which the Office of that Contracting Party would be entitled to receive from an applicant for a grant of protection for an equivalent period to the same number of designs, that amount being diminished by the savings resulting from the international procedure.
If this notification is made, then it is required that the amount of the individual designation fees be expressed in the national currency. Subsequently, the Director General will, in consultation with the Registrar, establish the amount of the fees in Swiss currency on the basis of the official exchange rate of the United Nations.
Reduction of individual fees for Least Developed Countries
A Contracting Party making a notification requiring individual designation fees might wish to implement the recommendation made by the Assembly of the Hague Union, which reads as follows:
“Contracting Parties that make, or that have made, a declaration under Article 7(2) of the 1999 Act or under Rule 36(1) of the Common Regulations are encouraged to indicate, in that declaration or in a new declaration, that for international applications filed by applicants whose sole entitlement is a connection with a Least Developed Country, in accordance with the list established by the United Nations, or with an intergovernmental organization the majority of whose member States are Least Developed Countries, the individual fee payable with respect to their designation is reduced to 10 per cent of the fixed amount (rounded, where appropriate, to the nearest full figure). Those Contracting Parties are further encouraged to indicate that the reduction also applies in respect of an international application filed by an applicant whose entitlement is not solely a connection with such an intergovernmental organization, provided that any other entitlement of the applicant is a connection with a Contracting Party which is a Least Developed Country or, if not a Least Developed Country, is a member State of that intergovernmental organization and the international application is governed exclusively by the 1999 Act.”
Individual designation fee: international applications only
Any Contracting Party bound by the 1960 Act whose Office is an Examining Office may, in a declaration, notify the Director General of WIPO that, in connection with any international application in which it is designated under the 1960 Act, the standard designation fee is to be replaced by an individual designation fee, whose amount should be indicated in the declaration and can be changed in further declarations. The declaration may also specify that the individual designation fee to be paid comprises two parts (refer to “Individual designation fees”). The said amount may not be higher than the equivalent of the amount which the Office of that Contracting Party would be entitled to receive from an applicant for a grant of protection for an equivalent period for the same number of designs, that amount being diminished by the savings resulting from the international procedure.
60 Article 15(1), item 2(b); Rules 12(1)(a)(iii) and (3), and 36(1)
Amount of the individual designation fee
A declaration concerning individual designation fees (refer to “Standard designation fees” and “Individual designation fees”) must indicate the amount of such fees, expressed in the currency used by the Office concerned and, where applicable, any change in the amount. Where this currency is other than Swiss currency, the Director General of WIPO, in consultation with the Office, establishes the amount of the fees in Swiss currency on the basis of the official exchange rate of the United Nations.
Where, for more than three consecutive months, the official exchange rate of the United Nations between a Contracting Party’s currency and Swiss currency is higher or lower by at least 5% than the last exchange rate used to establish the amount of the individual fees in Swiss currency, the Office of that Contracting Party may ask the Director General of WIPO to establish new amounts in Swiss currency for the individual fees.
Where, for more than three consecutive months, this exchange rate is lower by at least 10% than the last rate applied, the Director General of WIPO, at his own initiative, establishes new amounts in Swiss currency for the individual fees. The amounts so fixed are published on the WIPO website and become applicable at a date to be fixed by the Director General of WIPO, which is between one and two months after such publication.
Standard designation fees
A Contracting Party that has not made an individual designation fees declaration under Article 7 will be entitled to a standard fee under Rule 12(1).
There are three different levels of standard designation fee, reflecting the scope of examination carried out by an Office. For level two or three to apply it is necessary to make a declaration to that effect.
The levels are as follows:
- level one, for Contracting Parties whose Office does not carry out examination on substantive grounds – this level will apply automatically in the absence of any declaration;
- level two, for Contracting Parties whose Office carries out examination on substantive grounds other than novelty (for example, on issues such as the definition of a “design”, public order and morality, or the protection of State emblems);
- level three, for Contracting Parties whose Office carries out examination on substantive grounds, including a limited examination as to novelty (for example, an examination as to local novelty only even if the criterion for the validity of the design right is worldwide novelty), or examination as to novelty following opposition by third parties.
It should be noted that an Office that is an Examining Office, and thus is entitled to make the notification requiring an individual designation fee, may, instead, for example, make the declaration requiring the level two or three standard designation fee.
Mandatory contents of an international application (declaration)
Any Contracting Party bound by the 1999 Act whose Office is an Examining Office and whose law, at the time it becomes party to that Act, requires that an application for the grant of protection for a design should contain any of the following elements – (i) indications concerning the identity of the creator, (ii) a brief description and/or (iii) a claim – in order for that application to be accorded a filing date under that law may, in a declaration, notify the Director General of WIPO of those elements.
99 Article 5(2); Rules 7(4) and 11
Identity of the creator
In order that a country acceding to the 1999 Act can make a declaration requiring that an international application shall contain indications concerning the identity of the creator of the design that is the subject of that application, two conditions must be fulfilled:
- the Office must be an “Examining Office”, and
- the national law must provide that, in order that a national design application be granted a filing date such application must contain indications concerning the identity of the creator of the design that is the subject of the application.
Otherwise, this declaration cannot be made.
Brief description
In order that a country acceding to the 1999 Act can make a declaration requiring that an international application shall contain a brief description of the reproduction or of the characteristic features of the design that is the subject of that application, two conditions must be fulfilled:
- the Office must be an “Examining Office”, and
- the national law must provide that, in order that a national design application be granted a filing date such application must contain a brief description of the reproduction or of the characteristic features of the design that is the subject of that application.
Otherwise, this declaration cannot be made.
The requirement to furnish a brief description is to be distinguished from the requirement to furnish reproductions or representations of a design. It is already an established requirement of the Hague System that the latter be furnished (refer to Article 5(1)(iii) and Rule 9(1)). Similarly, it is required by Article 5(1)(iv) that an indication of the product or products that constitute the design or in relation to which the design is to be used be indicated in an international application (item 9 of the international application form).
Claim
In order that a country acceding to the 1999 Act can make a declaration requiring that an international application shall contain a claim, two conditions must be fulfilled:
- the Office must be an “Examining Office”, and
- the national law must provide that, in order that a national design application be granted a filing date, such application must contain a claim.
Otherwise, this declaration cannot be made. In accordance with Rule 11(3), the declaration under Article 5(2)(b)(iii) must specify the exact wording of the required claim.
Special requirements concerning the applicant and the creator (Rule 8) (declaration)
Filing in name of the creator
If the national law of a country that is acceding to the 1999 Act contains a requirement that a national application for the protection of a design must be filed in the name of the creator, that country may make a declaration notifying the Director General of WIPO of that fact.
This declaration should be distinguished from that referred to under “Identity of the creator”.
In such case, where the person identified as the creator is a person other than the person named as the applicant, Rule 8(2)(ii) requires that the international application shall be accompanied by a statement or document to the effect that the international application has been assigned by the creator to the applicant, and it is the applicant who will be recorded as holder.
This declaration has been made by seven Contracting Parties, namely Brazil, Finland, Ghana, Hungary, Iceland, Mauritius and Mexico. However, rather than requiring the furnishing of such a statement or document, these Contracting Parties have availed of the facility provided in item 11 of the international application form, which states as follows:
“In respect of the designation of Brazil, Finland, Ghana, Hungary, Iceland, Mauritius and/or Mexico the person indicated in item 11 declares to be the creator of the design. Where the person identified as the creator is a person other than the applicant, it is hereby stated that the present international application has been assigned by the creator to the applicant.”
Otherwise, in principle, the declaration should specify the form and content of any statement or document required.
Oath or Declaration of the creator
If the national law of a country that is bound by the 1999 Act contains a requirement that an oath or declaration of the creator must be furnished, that country may make a declaration notifying the Director General of WIPO of that fact. The declaration must specify the form and content of any statement or document required.
This declaration should be distinguished from that referred to under “Identity of the creator”.
The international application containing the designation of the Contracting Party which has made the declaration must also contain indications concerning the identity of the creator of the design.
Unity of design
If the national law of a Contracting Party that is acceding to the 1999 Act contains a requirement that designs which are the subject of the same application should conform to a requirement of unity of design, unity of production or unity of use, or that the designs should belong to the same set or composition of items, or that only one independent and distinct design be claimed in a single application, that Contracting Party may make a declaration notifying the Director General of WIPO of that fact. The declaration should be comprehensive, detailed and specific as to the requirements in question.
The Office of the Contracting Party that made the declaration may refuse the effects of the international registration pending compliance with the specified requirement of unity of design. Following a notification of such refusal, the international registration may be divided before the Office of that Contracting Party in order to overcome the refusal ground.
It is recalled that the requirement of unity of design does not affect the applicant's right to include up to 100 designs in the international application even if a Contracting Party that has made the declaration is being designated. However, to forestall possible refusals on the ground that the designs in the international registration do not conform with the requirement of unity of design under the applicable law, the applicant may wish to take into consideration any declaration of unity of design made by a Contracting Party in which protection is sought (refer to "How to submit an international application (eHague or form DM/1?)", "Item 6: Number of designs, reproductions and/or specimens (mandatory)", or "Refusal of Protection", "Unity of design".
Guidance on multiple designs
The criteria for unity of design may be different from one jurisdiction to another. Therefore, the Guidance on Including Multiple Designs in an International Application in Order to Forestall Possible Refusals 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, and is intended to mitigate the risk of possible refusals by their Offices. It should, however, be noted that the Guidance cannot be considered an all-inclusive or stand-alone guide.
Requirements concerning views
If the Office of a Contracting Party that is acceding to the 1999 Act requires certain specified views of the product or products which constitute the design or in relation to which the design is to be used, that Contracting Party may make a declaration notifying the Director General of WIPO, specifying the views that are required and the circumstances in which they are required. However, the declaration may not require more than one view where the design or product is two-dimensional, or more than six views where the product is three-dimensional.
The effect of the declaration is that the Office of the Contracting Party that made the declaration can refuse the effects of the international registration pending compliance with the specified requirement of views (refer to "Refusal of Protection", "Specific views or sufficient disclosure of the design").
Refusal of protection
Extension of period for notification of refusal (Rule 18(1)(b))
In principle, the period within which an Office must notify a refusal is six months. However, for a Contracting Party designated under the 1999 Act, this period may be extended to 12 months in the following cases:
- the Office is an “Examining Office”, or
- the national law provides for a procedure for opposition to the registration of a design.
A procedure of opposition referred to in the second condition, above, is to be distinguished from a so-called “invalidation” procedure which should normally take place after granting protection, in which case, the refusal period would not need to be extended.
Date of effect of international registration
Date of effect of international registration (Rule 18(1)(c)(i))
The declaration referred to under “Extension of period for notification of refusal (Rule 18(1)(b))”, above, may also state that the international registration shall produce the effect referred to in Article 14(2)(a) at the latest at a time specified in the declaration which may be later than the date referred to in that Article but which shall not be more than six months after the said date.
The effect of this declaration is to establish the regime under which the international registration may produce the effect as a grant of protection under the national law after the expiry date of the refusal period, but which must be within six months from that expiry date.
It is to be noted that, where the Office of the country that made the declaration has not found any grounds for refusal, it is obliged to issue a statement of grant of protection provided for in Rule 18bis(1) with respect to an international registration designating that country.
Date of effect of international registration (Rule 18(1)(c)(ii))
The declaration referred to under “Extension of period for notification of refusal (Rule 18(1)(b))”, above, may also state that the international registration shall produce the effect referred to in Article 14(2)(a) at a time at which protection is granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the applicable refusal period.
The effect of this declaration is to safeguard certain exceptional circumstances under which the Office cannot complete substantive examination as required by the national law within the applicable refusal period, for instance, due to an inforeseeable circumstance, such as natural disaster. The application of this declaration should therefore be limited to exceptional cases, and on an individual case basis, as opposed to a declaration referred to under “Date of effect of international registration (Rule 18(1)(c)(i))”, above.
It is to be noted that, where the Office of the country that made the declaration has not found any grounds for refusal, it is obliged to issue a statement of grant of protection provided for in Rule 18bis(1) with respect to an international registration designating that country.
Effect of change in ownership
Any country may, in a declaration, notify the Director General of WIPO that the recording in the International Register of a change in ownership of an international registration shall not have effect in that country until its Office has received the statements or documents specified in that declaration.
Common Office of several states
If several States have effected the unification of their domestic legislation on designs, they may notify the Director General of WIPO:
- that a common Office is to be substituted for the national Office of each of them, and
- that the whole of their respective territories to which the unified legislation applies is to be deemed to be a single Contracting Party for the purposes of the Hague Agreement.
60 Article 30(1); 99 Article 19(1)
Official records
The I.D.B. is the official publication of the recordings made in the International Register of the Hague System.
Extracts and certified copies
Extracts and certified copies are official information from the International Register. Extracts and certified copies are also useful for claiming priority under the Paris Convention.
An international application and registration remains confidential in relation to third parties until publication of the international registration. With respect to any published international registration, any person may request the International Bureau to provide, against the payment of the prescribed fees, the following information:
- extracts from the International Register;
- certified copies of recordings made in the International Register or of items in the file of the international registration (typically "priority documents");
- uncertified copies of recordings made in the International Register or of items in the file of the international registration;
- written information on the contents of the International Register or of the file of the international registration;
- photographs of specimens.
The fees for these information services are included in the Schedule of Fees.
To obtain these extracts, copies or information, the request must indicate the international registration number or the application number (nine-digit number or "WIPO" + number) assigned by the International Bureau. It is recommended to submit the request through Contact Hague.
It is to be noted that the possibility to ask for an extract, a copy or information in relation to any international application or international registration which has not been published is limited to the applicant or holder of that international application or registration or their appointed representative before the International Bureau.
Priority documents and WIPO Digital Access Service (DAS) for International Applications
An international application may itself serve as a basis for claiming priority in a subsequent national, regional or international application. The International Bureau provides a certified copy of such an international application (“priority document”) upon request from the applicant or holder.
In this respect, the International Bureau participates in the WIPO Digital Access Service (DAS) as a “depositing Office”, offering the following two options:
- The applicant or holder may request a DAS code which is provided free-of-charge (no priority document is provided). This DAS code can be communicated to Offices for the retrieval of the priority document, if they participate in DAS as an “accessing Office” for “Hague international applications” or “National industrial design applications”. For more information about DAS and its participating Offices, refer to the WIPO website.
- The applicant or holder may request a priority document which is provided in PDF format (digitally signed and certified) together with a DAS code. The fees for a priority document are set out in the Schedule of Fees.
Data dissemination
Data from the I.D.B is available in computer-readable format, XML, via FTP server.
The following standards apply:
- Standard ST.3: Two-letter codes for the representation of states, other entities and organizations.
- Standard ST.96: Processing of industrial property information using XML.
- This applies, for instance, to the member States of the African Intellectual Property Organization (OAPI) but not to the member States of the European Union (where protection of designs can also be obtained through their own national Offices).↑
- This situation corresponds to the Benelux Office for Intellectual Property (BOIP), which is the common Office to Belgium, Luxembourg and the Netherlands (the Benelux countries).↑
- This list also concerns the members of the Hague Agreement bound by the 1934 Act.↑