On April 3, 2017, President Vladimir Putin signed the law on ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. It took Russia 18 years to come to adoption of this international agreement concluded at a Diplomatic Conference in Geneva in 1999. Back then, Russia signed the final act of the conference, but for all that time it has not completed the domestic procedures necessary to adopt it as an international agreement of the Russian Federation. Now, finally the agreement has been ratified and after complying with formalities, i.e., delivery of the ratification instrument to the International Bureau of the World Intellectual Property Organization (IB of WIPO)—Russia will become a party to the Hague System for the International Registration of Industrial Designs. The law on ratification will enter into force on October 1, 2017. After this date the Ministry of Foreign Affairs of Russia will notify WIPO of the ratification, and in 3 months the Russian Federation may be designated in international applications for registration of industrial designs. This may be expected soon but not earlier than January 1, 2018.
The law on ratification contains a number of declarations clarifying how Russia will apply the Geneva Act of the Hague Agreement. These include:
- individual fee will be charged in Russia in respect of a designation of Russia as a country, where protection is claimed, and in respect of any further renewals;
- no deferment of publication is provided for in Russia (this means that it will not be possible to designate Russia and, at the same time, request deferment of publication of the claimed design);
- the Russian PTO will have 12 months to examine the design and issue a refusal(a refusal to grant protection may be opposed in the same way as in case of a refusal under a national application);
- it is mandatory to comply with the requirement of unity for industrial designs included in the international application;
- the international registration becomes effective in Russia upon sending a decision regarding the grant of protection by the Russian PTO to WIPO;
- any change in the ownership of the international registration will be valid for Russia only upon submission to the Russian PTO of the corresponding documents on the right transfer;
- the term of the international registration in Russia may be renewed several times for five years up to expiration of 25 years from the date of the international registration;
- due to the check for compliance with the security requirements, the international application filed through the Russian PTO will be transmitted to WIPO after 6 months.
The law on ratification contains no declarations, provided for in Article 5(2)(b)(i) and 5(2)(b)(ii) of the Geneva Act, on mandatory indication of the creator of the industrial design in the application and on a mandatory brief description of the reproductions or of the characteristic features of the claimed industrial design.
Thus, soon, the Hague System for Protection of Industrial Design will become a working alternative to acquisition of a Russian patent for an industrial design.
We will keep informed our clients of further course of events related to Russia’s participation in the Hague System for the Registration of Industrial Designs.