Last week (on Tuesday 13 March 2018), the UK Government delivered to General Francis Gurry, the Director of WIPO (World Intellectual Property Organization), its instrument of ratification of the Geneva Act (1999) of the Hague Agreement.
What does this mean?
This means, that as of 13 June 2018, companies and rights owners in the UK will be able to use the Hague System to apply for and register industrial designs, in a similar manner as the Madrid system which is used for international trade mark filing programmes.
The system offers a cost effective and time efficient means of obtaining registered design protection in up to 68 countries, by filing one application, in one language, with one set of fees, all through WIPO.
Hague System criteria
As with trade mark applications through the Madrid system, an applicant must meet one of the following criteria:
- be a national of a Contracting Party
- be a national of a Member State of an intergovernmental organisation which is a Contracting Party (such as the European Union or the African Intellectual Property Organization)
- have a domicile in the territory of a Contracting Party
- have a real and effective industrial or commercial establishment in the territory of a Contracting Party, or only under the Geneva (1999) Act
- have a habitual residence in a Contracting Party.
What you need to know
Although by virtue of our membership of the EU, UK businesses have until now been able to file using the Hague system, this ratification appears to be a gesture towards ensuring some consistency of Intellectual Property Rights for UK Applicants when Brexit occurs in March 2019. In addition, it helps to encourage reciprocal filings by other contracting parties in the UK.
As with trade marks, Applicants will need to ensure that the one Application meets the formalities and requirements of the substantive design laws in each of the particular territories in which they wish to attain protection. Particular attention needs to be given to the representations, the Locarno class and the description. If these elements do not adhere to the law in a particular territory, then a local associate will have to be instructed to try to overcome any objections. This of course defeats the object of applying via WIPO.