1. Brief Introduction of the Hague System
The Hague System for international design applications offers the owner of a design a means of obtaining up to 15 years of protection in several countries by filing one application in one language, with one set of fees in one currency.
By filing a single international application with WIPO, the Hague System implements a practical business solution for registering up to 100 designs in 96 countries at one time, including two inter-governmental organizations: the African Intellectual Property Organization and the European Union Intellectual Property Office. Essentially, it provides global coverage for design application filings, much like the PCT (Patent Cooperation Treaty) does for patent applications. To be eligible to use the Hague System, individuals must meet any of the criteria below:
Being a national of one of the contracting parties to the Hague Agreement.
Having a domicile or habitual residence in one of the contracting parties.
Having a real and effective industrial or commercial establishment in one of the contracting parties.
2. Why choosing to file the Hague Design Applications
The advantages of Hague Design Applications can be concluded as:
Broader International Design Layout
Strategies. By utilizing the Hague design applications, applicants
can implement comprehensive international design layout strategies
to secure global product layout and innovation protection from the
outset. This approach offers extensive protection opportunities in
over 96 countries.
Easier and more convenient application procedures. The Hague System
proposes a simpler and more convenient application procedure by
allowing applicants to choose from English, French, and Spanish as
filing languages, thus eliminating the requirement for extensive
translations into other languages. Additionally, applicants have
the flexibility to defer publication of their designs with more
precise timing options, calculated by month.
Lower costs. Cost of filing a Hague Design application may vary
depending on the number of designs included. Generally, filing more
designs together results in a lower cost per design. Designs in the
same class can be submitted together in a single application,
allowing for separation in later national stages. This approach can
significantly reduce filing costs.
More time for preparation of Office actions. With the Hague System,
applicants have the flexibility of up to 4 months to address office
actions in the chosen language at the time of filing, which is
twice the standard 2-month response time in Chinese, if before the
CNIPA.
No strict rules for the choice of representatives. The Hague System
does not place any restrictions or requirements on the
qualifications of agents in the international phase.
3. Application Procedures and Documentation
3.1 Application Procedures
As the receiving office of the international design applications under Hague System, WIPO will do a formality examination upon receiving an application. If there are any irregularity issues, the applicant needs to respond within three months. If the requirements are met, WIPO will register the design application and issue an international registration certificate. The international registration will be published in the International Gazette. For the publication time, the applicant has three options: 1. Immediate publication, as soon as the International Bureau is ready, usually within one month; 2. Standard publication, published 12 months after the international registration date. 3.Delayed publication, the maximum delay is 30 months, and if one chooses to delay publication, he or she can also request publication halfway through.
After publication, substantive examination is conducted, and the contracting parties may directly authorize the granting of the design application or issue a notification of refusal. The rejection period varies, generally within 6 months or 12 months (for instance China). The latest rejection deadline is 36-42 months. If no refusal has been issued, protection is deemed to be granted automatically.
Upon the design's grant, the applicant will be granted a protection term of 5 years. Renewal is required to secure the next five-year protection term, with the option for 2 renewals resulting in a minimum total protection term of 15 years. Partial renewal is also possible, which allows for the selective renewal of the international registration for specific contracting parties or certain designs, providing flexibility in managing the design protection.
3.2 Application Documentation
You will need to prepare the documentation listed below.
One application form (electronic)
DM1 FORM, you have the option to either fill out the DM1 electronic
form or enter your information directly online using the E-Hague
platform.
Reproductions of the design application. The images must meet the
requirements of WIPO and try to meet the requirements of the
designated contracting parties too, because even if international
registration is obtained through WIPO, it is possible for a
contracting party to reject the effectiveness of the design on the
grounds of for example insufficient disclosure, clarity in the
published copy.
Description of the design application. Contracting parties like
China, Romania, Vietnam, and Syria require a description to be
submitted. Failure to do so will be considered non-compliant,
leading to a delay in international registration.
Information about the creator of the design.
Priority document. WIPO does not examine priority documents.
Applicants may provide a DAS code for designated contracting
parties' competent authorities to verify through WIPO DAS
System. However, some certain contracting parties require direct
submission of priority documents, such as US, Mexico, Turkey, and
Russia.
Choosing the Locarno class of the design.
Choosing the designated States of the design.
Deciding the publication timing of the design.
Payment of the design fees. You can use the Fee calculator on the
WIPO website for a detailed cost estimate for your design
filings.
4. Conclusion
From the aspects of the basic introduction, procedures, documentation, the WIPO tries to provide, through the Hague System, a user-friendly, affordable, and accessible way of protecting new designs. It seems that individuals can apply themselves through E-Hague with the necessary documents without the help of any experts at the international level.
However, it is important to note that registration of a design application at the international level doesn't mean that the right holder can obtain effective design protection in the respective jurisdictions, and that some defects in the application, which may be raised during the national phase upon substantive or partially substantive examination, may not be overcome anymore once the international design application is filed. A design expert knowing not only the formality requirements of the Hague system, but also the substantive requirements and practices of the different jurisdictions, can help the right holder get more stable and reasonable design protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.