International Design Registrations via the Hague Agreement

As set out in a recent article when the UK leaves the EU-IPO at the end of December 2020 Registered Community Designs will no longer have effect in the UK. This gap can be patched by filing both a Registered Community Design and a UK Registered Design, which due to the low fees in the UK will only add a little cost but adds the complexity of managing two separate registrations. The coming change gives us a prompt to consider design filing strategies, and in particular use of the Hague International Design Registration system.

The Hague system should, in theory, be very attractive to applicants in a comparable manner to the PCT system for patent applications. However, there are relatively few filings with 5,900 applications in 2019 compared to about 85,000 Registered Community Designs in the same period. One key reason for this is likely to be that most designs are filed in relatively few countries and so the benefits of a centralised process are reduced. Also, until relatively recently a number of important countries were missing (the USA only joined in 2015) removing the benefits of a single application route. The system now covers 74 countries, although there are some significant omissions such as China and Australia. There is also a perception that the system is complex to use, which does carry some weight.

The system does bring significant advantages and applicants should consider this route when they are seeking design protection in more than a couple of countries.

Overview

The Hague agreement is actually a set of agreements ranging from the original Hague Agreement of 1925 to the Geneva Act of 1999. The most relevant part is the Geneva Act as it is the most recent and applies in most countries likely to be of interest.

A full list of the contracting states for each agreement can be found here, which notably includes the EU-IPO, the UK (separate to EU membership), the USA, Japan, Russia, South Korea, and Canada. Membership is not only relevant to where protection can be obtained, but also to who can use the system as an applicant must have a connection to a member state. Applicants from non-members such as China and Australia may therefore not be able to apply via this route.

The Hague application process is administered by WIPO and international applications are filed at that office, usually in electronic form. WIPO conducts a formalities examination of the application and once satisfied publishes the application and forwards it to all selected contracting offices. Each office then examines the application according to their local laws and can raise objections up to 12 months after the filing date. Although one application is filed at WIPO, this devolves to a set of independent rights in each office. It is therefore possible for the application to be registered by some offices but refused by others.

If objections are raised by an office it is necessary to address those at the relevant office, which often requires appointment of a local representative. This does add to management complexity and cost, particularly as there can be a significant delay between registration of the design by some offices and the appearance of objections from others. WIPO have agreed common rules for the form of representations and so with careful preparation it should be possible avoid objections, but inevitably there will be some cases where the nature of the designs means objections arise in some countries.

As with many national systems an application can consist of multiple designs, provided they are in the same Locarno classification (i.e. relate to the same product). However, where national laws only allow a single design (most notably the USA) the national examination process may require the application to be split up using divisional applications (which can incur significant cost).

Each country represents an independent IP right, and any objections or refusals only affect the relevant country. The same is true for any challenge to validity which must be brought in each country individually and the outcome only affects that country.

Each registration is valid for an initial period of 5 years, which is then renewable in blocks of 5 years. A minimum total period of 15 years is provided by the 1999 Act, but many countries allow more (for example, the UK allows a maximum period of 25 years).

Costs

Although only three types of fee are payable with an application, the system does have one of the most complex fee schedules imaginable. Each application requires a basic fee and a publication fee, plus designation fees for each selected country. The designation fee leads to the complexity as each country attracts either one of three basic fee levels, or a specific fee applied by that country. Due to the designation fees the actual cost of each application varies depending on the number of countries selected, and which countries they are.

As an example, the official fees (in 2020) for designating the EU and the USA would be about £1,260, which is a bit cheaper than the official fees for individual EU and US applications (strongly dependent on exchange rates since Hague fees are defined in Swiss Francs). However, in reality the Hague application is likely to be significantly cheaper as only one set of attorney fees are incurred.
If Japan and Canada are also added the official fees only increase to £2,093, a significant reduction compared to individual national applications even before considering attorney fees.

This simple fee comparison makes the Hague route look attractive for more than a couple of countries. However, it is worth remembering that if objections are raised in individual countries it is necessary to appoint a local agent in that country to deal with the objection and that will add to the cost. However, if care is taken to ensure the representations comply with national requirements the risks of a local objection can be reduced.

Even for a relatively modest set of countries, the Hague route can thus provide significant cost reductions for applicants.

Renewals

At the end of the initial registration period of 5 years a design can be renewed in blocks of 5 years. The renewal is performed centrally, via WIPO, with the fees due being dependent on the countries designated by the registration.

In general, similar to the registration costs, renewal fees for a small number of countries are comparable to the national fees, but savings can be achieved for larger numbers. The renewal fees are again somewhat complex with wide variations in fees between countries. Only one payment is needed for all countries which again simplifies management and administration.

Summary

The Hague convention offers a centralised application route for designs which can simplify portfolio management and reduce costs. Although there are some notable omissions, the convention does now cover the majority of countries likely to be of interest and can hence reduce the number of individual filings required.

For registrations which are going to cover more than a couple of countries the Hague route is well worth consideration to simplify portfolio management and reduce costs. We advise all parties to consider this filing route for their design portfolios.