Continuous protection of rights for trademarks and industrial designs forms an integral part of any business strategy of companies designing/inventing, producing and selling large-scale goods. There is no doubt that the appearance of a product and its package is a key factor in a consumer’s purchasing decisions. In other words, the success or failure of a product may rest, at least partially, on how it looks.
There are two main ways to acquire design protection: through national registration or using the international system for registration of industrial designs — the Hague system.
On 3 April 2017, the Federal Act on the ratification of the Geneva Act of the Hague Agreement was signed into law in Russia, introducing significant changes to patent legislation for protection of industrial designs and offering new options for applicants, both Russian and from abroad. The Geneva Act itself took effect in Russia on 28 February 2018.
The Russian Federation became the 68th member of the Hague Union. The complete list of all Contracting Parties currently constituting the Hague Agreement is available at http://www.wipo.int/hague/en/members/. By selecting each of the Contracting Parties, one will have access to several categories of information regarding national IP offices, national/regional legislations and legal provisions relevant to processing international applications or registrations.
For those familiar with the Madrid Protocol for trademarks or the PCT application process for inventions and utility models, the procedural aspects of the Hague Agreement are very similar. Like Madrid and PCT, the Hague Agreement is an international procedural treaty that establishes a simple route for filing a design patent application that can be transmitted to many countries worldwide. Unlike Madrid, in particular, the Hague System works without a basic application and allows self-designation.
Even though the process may still require adjustments based on the requirements of each jurisdiction where protection is sought, the Hague System offers the following advantages:
- Standardized formal requirements for international design applications
- Inclusion of up to 100 designs in a single international design application
- Expedited examination of international design applications (in certain countries, the first action must be issued within six months. Usually, this has no effect on traditionally filed national conventional design applications.)
- Potential cost savings, at least at the outset (translation costs, local counsel expenses, etc. However, a local counsel would be needed in the event of an office action and refusal.)
- Centralization of all downstream administrative issues
However, there are some disadvantages of the system, which proves that careful planning and strategy with a patent counsel is highly recommended when using the Hague Agreement to protect a design.
- The Hague Agreement does not implement uniform drawing standards between member countries. Therefore, each country still has different substantive drawing requirements and different drawing sets may be needed depending on which countries are designated (eg, orthographic projection requirements (Japan); surface shaded or unshaded requirements (Korea); contouring requirements; partial design requirements; multiple view requirements).
- Generally, the International Bureau publishes an international design application within six months after the date of the international registration. Early publication could provide competitors with an advantage (eg, disclosure of a new design will occur sooner, so copying can occur sooner). In this case, an applicant should consider a deferred publication. However, if an international design application designates Russia, this is not an option (see below).
To optimize the process, the Hague Agreement establishes general provisions for all Contracting Parties, but allows individual countries to declare certain amendments within the agreed ranges. The following list shows the basic declarations made by Russia within such agreed ranges for the Hague System:
- Change of the standard fee to an individual one for designating Russia as a Contracting Party (basically, these fees are equal to the standard ones);
- No deferred publication (publication of a Hague application means that the design filed for registration may not be held confidential. This may represent a significant drawback for companies who prefer to keep their designs secret until launch of the product in question (see point 2 of disadvantages above). In this case, an applicant should consider filing a national design application directly with the Russian Patent Office and claiming a convention priority if available.)
- The refusal period of six months is replaced with a period of 12 months
- The design unity requirement must be met (all design patent applications in Russia are examined for unity; this criterion is particularly rigorous and foreign applicants who rely on the Hague Agreement should be ready to file divisional applications for those designs that do not meet the said requirement)
- The validity term of an international registration in Russia begins from the date the Russian Patent Office forwards the relevant notification to the International Bureau of the World Intellectual Property Organization
- Change in ownership of an international registration for Russia will be null and void until the Russian Patent Office receives the relevant confirmatory documents
- Patent owners may enjoy protection for 25 years starting from the international application’s filing date; the initial validity term of an industrial design patent is five years and is extendable for an additional five years four times
The Russian Patent Office will need time to adopt the system and it is highly likely that, in the future, the Office will issue additional administrative rules that clarify issues relating to the examination of international design applications.
For companies and individuals, the Hague Agreement is a great way to obtain protection for industrial designs in many countries through a typically faster and generally less expensive process than the traditional model of starting with a patent attorney in each country. Despite the administrative advantages of the Hague System, one still needs to bear in mind that design protection across the world is far from unified. Caution should be taken to ensure that the particular general requirements for each jurisdiction, Russian in particular, are met before the application is filed.
For those who are skeptical, the traditional path of preparing and filing a national Russian design patent application claiming a priority under the Paris Convention remains available.