British Accession to the Hague Agreement

WIPO
Author Jane Lambert}
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Jane Lambert

On 13 March 2018 the British government deposited with the Director General of the World Intellectual Property Organization ("WIPO") an instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("the Hague Agreement").  The deposit of that instrument enabled the UK to join the Hague system for the registration of industrial designs from 13 June 2018.  The Hague system allows businesses to register up to 100 designs in 69 countries in a single application.

The Hague system is not entirely new to British business as the European Union has been party to the Hague Agreement since 1 Jan 2008.  The EU's participation in the Hague system works well for businesses that want to protect their designs throughout the whole EU as well as other parties to the Hague Agreement but Community design registration is an unnecessary expense for businesses that seek protection only in the UK and a small number of other states.

British accession to the Hague Agreement should enable those businesses to take full advantage of the Hague system. It offers a direct route to UK protection for designs and provides businesses that wish to register designs in several  countries with a simpler, more cost effective method for managing their rights. Businesses should therefore save money on design registration and rights management.  British accession should also encourage businesses outside the UK to register their designs in this country thereby encouraging manufacturing, distribution and licensing here.

The consultation document UK Accession to the Hague Agreement for Industrial Designs which the IPO published in 2015 offers the following worked example on page 8:

"The average number of countries selected in an application under the Hague system is 5. The average number of designs registered is 3. Taking this common application the level of fee, for a UK business, would be: UK included within an EU Hague designation- £587-£847 UK domestic application and Hague designating non-EU countries- £589-£849 Individual UK designation under Hague system- £480-£740 (expected). Individual UK membership will therefore save business an average of £108 in application fees, alongside any additional savings in legal, notary and translation fees. "

Not megabucks perhaps, but a saving nonetheless.

The Hague Agreement does not attempt to harmonize industrial design law.  It seeks merely to facilitate registration.  There is therefore no definition of an "industrial design" in the Hague Agreement.  However, the WIPO website responds to the question, "What is an industrial design?" with the words:

"In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article.
An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color."

It is up to the intellectual property office of each country in which design protection is sought to decide whether to accept or refuse a registration.  As the IPO's consultation document makes clear on page 15:
  • "The Hague system will not guarantee registration in the countries applied for. 
  • It reduces the work and cost involved in managing an application. 
  • A decision on whether a design can be registered in the countries chosen is down to the design registration offices in each country "
The legislation that enables the UK to accede to the Hague Agreement is s.8 of the Intellectual Property Act 2014.  S.8 (1) inserts a new s.15ZA into the Registered Designs Act 1949:

"Accession to the Hague Agreement

(1)   The Secretary of State may by order make provision for giving effect in the United Kingdom to the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted by the Diplomatic Conference on 2 July 1999.
(2)   An order under this section may, in particular, make provision about—
(a) the making of applications for international registrations at the Patent Office;
(b) the procedures to be followed where an international registration designates the United Kingdom;
(c) the effect of an international registration which designates the United Kingdom;
(d) the communication of information to the International Bureau;
(e) the payment of fees.
(3)    An order under this section may—
(a) amend this Act;
(b) apply specified provisions of this Act with such modifications as may be specified.
(4) An expression used in subsection (2) and in the Agreement referred to in subsection (1) has the same meaning in that subsection as it has in the Agreement.”

S.8 (2) makes a number of consequential amendments to the 1949 Act.

The statutory instrument that gives effect to s.8 of the 2014 Act is The Designs (International Registration of Industrial Designs) Order 2018 SI 2018 No. 23. That order amends both the statute and the Registered Design Rules 2006. 

Applications for registration under the Hague Agreement are made to the WIPO and not to the IPO. Applications designating the UK will be examined in the same way and to the same extent as applications to the IPO. There is no opposition procedure for applications through the WIPO.  The validity of registrations can be challenged after grant in the usual way.

Should amplification or clarification be required, readers should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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