Japan and the US Join International Design System

By Catherine Jewell, Communications Division, WIPO

Earlier this year, two of the world biggest economies joined a WIPO-administered system that supports product designers around the globe. Japan and the United States (US) acceded to the Hague System for the International Registration of Industrial Designs, extending its coverage to 64 countries. WIPO Director General Francis Gurry heralded this as an “extremely important” development. So what does it mean?

Easier access to new markets

“Designers in Japan and the US can now readily protect and promote their industrial designs in dozens of other countries around the globe that are Hague members, and designers in those countries now have easier access to protection in two of the largest global economies,” Mr. Gurry explained. “This is a win for businesses and designers everywhere and signals a major advancement of one of WIPO’s premier registry services.”

The accession of Japan and the US is “good news for the long-term growth of the Hague System,” said Grégoire Bisson, Director of WIPO’s Hague Registry. “It means that more users will be in a position to take advantage of the system.”

The Hague System provides a practical business solution for individuals and companies seeking to protect their industrial designs internationally. By filing a single application under the System, right owners can secure protection for their designs in all participating countries, avoiding the time and expense of having to file multiple separate applications with different national or regional IP offices.

The Hague System becomes more sophisticated

The 1999 Act of the Hague System – by which most members of the System are legally bound - allows for countries with examination systems as well as those with registration systems to join the Hague System. As Mr. Bisson noted, both Japan and the US operate examination systems to ensure applications meet certain legal standards, such as novelty. “Like the Republic of Korea, which joined in July 2014, the US and Japan have sophisticated national regimes, and users will need to comply with the substantive legal requirements of these jurisdictions when using the Hague System,” he said.

WIPO is enhancing its online tools to help users understand the additional requirements associated with seeking design protection in these two new jurisdictions. “We are developing an intelligent e-filing interface that will guide applicants designating these jurisdictions to ensure no formal omissions or mistakes are committed in filing an application. We want to ensure the System remains as user-friendly as possible,” Mr. Bisson said.

Positive long-term impact

These developments, Mr.Bisson believes, will have a positive impact on the way applicants handle their applications and value their design rights. “Up to now, applicants may not have always given a great deal of thought to the information they disclose in their applications as they were mainly targeting jurisdictions which do not require intellectual property offices to look at this aspect of an application for design rights. This, however, is a practice that could backfire when seeking to enforce their international registration in the courts. The greater rigor required by the Korean, Japanese and US systems promises to improve the overall quality of international applications, especially in terms of the way in which designs are represented in applications. This, in turn, will help raise awareness about the value of design rights.”

Growing global interest in design rights

Global interest in design rights as a means of creating value continues to grow. For example, in 2013, applications containing 1.24 million designs were filed worldwide . In 2014, despite a slight decline in the number of international applications, the number of designs contained in applications filed under the Hague System increased to 14,441, representing year-on-year growth of 9.6 percent. As the Hague System expands to include more countries, use of it is likely to grow still further, making it a more accurate indicator of international design activity.

“Design is an increasingly important part of innovation,” noted WIPO Director General Francis Gurry at the accession ceremony in February. “It is the way in which increasingly products are differentiated, and consumer approval is won. It crosses all sectors of industrial production.”

“Today, more and more technology is open-source, cross-licensed or shared – there are no bad cars, no unreliable watches or smartphones that don’t work,” said Mr. Bisson. “In this context, the aesthetic appeal of a product, its design, is the basis of business competition. This means that companies are placing greater importance on obtaining design protection.”
He explained that disputes between “innovative design juggernauts” such as Apple and Samsung over design rights are relatively rare; design rights are more often used by right holders to ward off illegal business operations. “When you flash a design registration certificate in front of fly-by-night counterfeiters dealing in knock-offs and fake spare parts, they have no interest in going to court or negotiating a license, they simply move on. That’s one of the greatest advantages of having a registered design right.” And in addition to their deterrent value, “design rights are a tool by which businesses can establish their credibility among potential business or investment partners”.

A smart business solution

The Hague System offers companies and individuals a smart business solution. By filing a single international application, users can seek rights in multiple jurisdictions. For example, “users can designate the European Union and obtain the same rights as those they would acquire if they filed directly with the Office for Harmonization in the Internal Market (OHIM) or national offices of any other Hague member country,” said Mr. Bisson. “The result is that you get one single registration for all the territories designated in an application.” But that is not the end of the story. “The advantages of a simple and unified filing procedure enjoyed at the outset continue to be enjoyed throughout the life of a registration,” Mr. Bisson explained. “The Hague System takes the heartache out of managing issues such as changes of address, renewing rights or assigning them to a third party. This is the real beauty of the Hague System.”

An efficient and cost-effective option

The average turnaround time to register a right under the Hague System is around nine days (down from 20 days four years ago). Using the System offers substantial savings not only with respect to filing fees but also in relation to agents’ fees. Outside of the System users need to appoint local legal representation to prosecute their applications before a national IP office.

While local IP professionals may no longer be required to represent an applicant under the Hague System, they can benefit from new revenue streams. “In many jurisdictions, the level of non-resident applications is low, and has huge growth potential,” Mr. Bisson observed. He explained that as the Hague System expands and fosters demand for non-resident protection locally, applicants are likely to turn to IP professionals for assistance in handling matters such as a refusal by a local office, or an opposition procedure (when a third party claims rights should not be granted) or enforcement actions (from cease and desist letters to negotiations and infringement actions to border measures). On the brighter side, they may also look for help in concluding licensing and technology transfer agreements. “The whole idea behind seeking design rights is to expand business,” said Mr. Bisson. “And this will create opportunities for new lines of business for the local IP profession.”

With two of the world’s largest economies on board and a number of other major players -Canada, China, Israel, Mexico, the Russian Federation and certain Asean countries - seriously considering Hague membership, the future looks bright both for the System and for product designers seeking international protection around the world for their innovative designs.