Centralised filing of international registered design applications under the Hague Agreement Concerning the International Registration of Industrial Designs (the 'Hague Agreement') will take a major step forwards on 13 May 2015 when the US and Japan join the system.
The Hague Agreement has existed for nearly a hundred years, but it has never been popular since most of the countries and regions that it covered were of relatively low commercial importance. However, with the addition of the European Union, which joined in 2008, and now the forthcoming accession of the major economies of the US and Japan, the Hague system could become more attractive. It will, for example, allow EU applicants to obtain registered design protection in the US and Japan via a centralised application.
However, US and Japanese applicants seeking protection in the EU should exercise some caution before rushing to use the Hague system for their registered EU designs (registered Community designs - RCDs). US or Japanese applicants adopting the Hague route are likely to use a prior national application from which they will claim priority. Our experience with direct RCD applications based on US or Japanese priority filings is that very often the drawings need alteration for use in the EU. For example, a Japanese application may have more views depicted than necessary, and US filings use shading as required by the US Patent and Trademark Office (USPTO). Under the developing EU case law on designs, both of these situations can lead to more limited protection than is necessary or desirable.
US and Japanese applicants may therefore be advised to continue to protect their designs in the EU by means of 'direct' RCD applications, and to seek the assistance of an experienced European design attorney in order to ensure that their registered design applications in the EU lead to the best, commercially useful protection under EU law.