Introduction
New countries joining
Benefits and possible downfalls
Increase in design registrations
The Hague Agreement Concerning the International Deposit of Industrial Designs (the Hague Agreement) is the basis of the Hague system, of which the Geneva Act 1999 is the latest and the most prominent act. The Hague system provides designers and businesses of the member states with the possibility to apply for design protection in several countries through a single application filed with the World Industrial Property Organization (WIPO), which administers the system in Geneva, Switzerland.
There are currently 77 contracting parties to the Hague Agreement, which covers over 90 countries. The Hague Agreement comprises three acts, the latest of which – the Geneva Act (adopted in 1999) – came into force in 2003. There are already 69 contracting parties to the Geneva Act to date, and the number is increasing. The Geneva Act provides the most modern, and therefore also the most flexible, route for countries to enter the Hague Agreement. It allows parties to make declarations (ie, exceptions honouring their domestic requirements for the registration of designs), while still complying with the Hague Agreement.
Various geographical areas have been missing from the Hague system. However, in recent years, the accession of markets such as Japan, South Korea, the United States and Russia have improved its scope. The Hague system received further good news in February 2022 with its expansion to China, which joined the Hague Agreement (Geneva Act 1999) on 5 May 2022. Out of the top 10 world economies (by gross domestic product in 2021), only India has not yet joined.
International design registration is something that all design-intensive companies which have an international business should consider as an option instead of national or regional registrations. For global companies, this consideration should be built into their IP strategy. Nordic design countries Norway, Denmark, Sweden and Finland have been contracting parties to the Agreement for a while, as has the European Union, with its registered Community designs (RCDs). The United Kingdom can be relatively easily added through the Agreement – owing to Brexit, it is no longer covered under the RCD.
Benefits and possible downfalls
The benefits of using the Hague system, much like the Madrid system for trademarks, are evident. In addition to its clear benefits on the management side – with easy, cost-efficient renewals and change administration – its geographical coverage is vast, now extending to over 90 countries. This is already enough for most international and global businesses.
However, a few downfalls do exist with regard to the system. It requires an understanding and knowledge of national law in each of the member countries, despite the fact that the WIPO's eHague filing system is informative and provides guidance to applicants. However, developing a protection strategy, which entails more considerations than the filing strategy, should be done with an experienced IP attorney, and preferably one who holds experience in design rights specifically and has a solid global attorney network from whom to seek national advice.
Increase in design registrations
At a minimum, all design-intensive companies should keep in mind the increasing number of designs that are registered through the international, regional and national design registration systems. Statistics provided by the WIPO and the European Union Intellectual Property Office, for example, show yearly growth in the number of applications, and with new countries entering the international system, this trend is expected to continue. Therefore, when creating or publishing designs, or even into entering agreements concerning designs, design-intensive companies should keep in mind the vast number of registered designs and, also, the risk that their design may infringe any of these earlier rights.
For further information on this topic please contact Katri Kiviniemi at Bryn Aarflot by telephone (+47 46 90 30 00) or email ([email protected]). The Bryn Aarflot website can be accessed at baa.no.