Transcript Slide 1

LLM University of Turin - Study Visit to WIPO
Registration of Designs under the Hague System: The Practical
Handling of International Applications under the Hague System
Geneva
October 3, 2013
Betty Berendson
Senior Information Officer
Information and Promotion Section
The Hague Registry
Contents
Added value of industrial designs
Why protect designs?
Background – What is the Hague System?
Key Principles and Characteristics
Geographical Scope of the Hague System – Going Global
Main Advantages
The International Procedure
Some Statistics
Information and IT Tools
Added Value of Industrial
Designs
Design sells!
The Swatch Collection
-Same brand
-Same technology
-Same price
-1,000’s of registered designs
Design drives consumers’ choice
“Case studies clearly demonstrate that … people are
willing to pay more for the well-designed product or
packaging solely based on appeal.” Virginia Postrel, The
Age of Look and Feel, Harper Collins, 2003
Why Protect Designs?
Design is an Asset
Good design is a creative process
Research and development for design is needed
Research and development is an investment
The outcome (design) is an asset
Assets need to be protected
One More Reason to Protect Designs
Designs are about the look
The look is easy to copy !
Why is it important to Register a Design?
Copyright or unfair competition may not be available
« Registered design » titles allow for:
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Cease and desist letters
IP brigade crack-downs
Interlocutory injunctions
Custom seizure
Registration Rights Are Territorial
Each registration is limited to the territory of the jurisdiction
Market in many jurisdictions = getting a title for each
IP Office A
company
IP Office B
IP Office C
Market A
Market B
Market C
The Hurdle to International Protection
Multiple filings are expensive and cumbersome
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many Offices for filing
many languages
many formalities
many currencies
many registrations
many renewals
many modifications
many foreign attorneys
or agents
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one language
one currency
one int. registration
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one renewal
one modification
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foreign attorney or
agent (needed only if refused)
Background - What is the Hague
System?
The Hague System: a costeffective way to protect industrial
designs internationally
The Hague System is…
A procedural agreement for the centralized acquisition
and maintenance of industrial design rights
for the filing of an
industrial design
« internationally" (in
Contracting Parties to the
Hague Agreement)
It provides a mechanism
for the central
management (postregistration)
The Hague System is…
One to Many Relationship
File a single international application for a
single international registration (IR) in which
one or more Contracting Parties (CP) are
designated
“Bundle of Rights”
If no refusal is issued, the resulting
international registration has the effect of a
grant of protection in each designated
Contracting Party
Key Principles
Key Principles
No need for a basic application/registration
Designation of the Contracting Party of the holder
possible
Most international applications are filed directly with the
International Bureau (not via an Office)
E-filing and e-renewal available
Subsequent designation is NOT possible
Who can use the Hague system?
Hague System = closed system:
● Entitlement to file an international application: the
applicant needs a connection with a CPs via nationality,
domicile, real and effective industrial or commercial
establishment or habitual residence (Geneva Act only)
● Only CPs may be designated
Geographical Scope of the
Hague System – Going Global
Hague Membership
Status on March 31, 2013
(by most recent Act)
70
60
50
40
30
20
10
0
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
2013
1999 Act
11
15
18
20
23
33
36
39
42
45
45
1960 Act
21
21
21
21
21
19
18
17
16
15
15
1934 Act
4
3
3
3
3
2
2
1
1
0
0
Hague Union
45 Geneva Act (1999) (including EU and OAPI)
15 Hague Act (1960)
60 Contracting Parties
Recent Accessions to the Geneva Act
Brunei Darussalam (as from December 24, 2013)
Tunisia (June 13, 2012)
Tajikistan (March 21, 2012)
Montenegro (March 5, 2012)
Potential accessions to the Geneva Act
Republic of Korea
USA
China
Japan
Russian Federation
Morocco
ASEAN Countries (announced for 2015)
Trinidad and Tobago
Barbados
Madagascar
Main Advantages of the Hague
System
Hague System is…
Cost-effective and efficient, thereby creating
opportunities that would not otherwise exist for any
enterprise with a limited legal budget
Flexible, affording right holders great flexibility in
targeting national, regional or global markets for
particular goods
When Filing
● ONE international application
● ONE international registration for all the designs included in the
application
● In ONE language (English/French/Spanish)
● Payment of ONE set of fees
● Payment in ONE currency (= Swiss francs)
● Filed with ONE office (International Bureau - WIPO)
Central Management
ONE request filed within the International Bureau in
case of:
● Change in ownership
● Change in the name or address of the holder
● Renunciation
● Limitation
ONE renewal request (e-renewal since 23-12-10)
Advantages of the Geneva Act
Accession opened to certain intergovernmental organizations
(currently the EU and OAPI);
Facilitates accession for countries whose legislation foresee novelty
examination;
Entitlement also on the basis of habitual residence;
Maximum deferment period of 30 months;
Minimum duration of protection of 15 years (5+5+5);
Larger geographical scope;
Timeframe of six months to notify a refusal may be replaced by 12
months (Offices that carry out substantive examination or whose
legislation foresee opposition).
Hague System / E-Filing
Very useful and user-friendly IT tool
More than 80% of the international applications are
currently filed through the e-filing interface
The e-filing interface is available on the WIPO website
http://www.wipo.int/hague/en/forms/intermediate.html
Hague System / E-Renewal
The e-renewal interface, introduced in January 2011, is a
successful IT tool
More than 60% of the international registrations are
currently renewed through the e-renewal interface
The e-renewal interface is available on the WIPO
website
https://webaccess.wipo.int/erenewal_dm/IndexController
?lang=EN
The International Procedure
Filing an International Application
in Spanish, English or French
directly with WIPO, electronically or on paper
up to 100 different designs (same Locarno class)
single set of fees (in CHF) is to be paid
A representative before WIPO may be appointed
Will use correspondents to defend against refusals
Role of the International Bureau (1/2)
Formal examination
Translation in the other 2 languages
Recording of the IR in the International Register
Crediting of designation fees on account of CPs
Publication in the International Designs Bulletin
Examination by the IB
Formal examination only
Application complete and in order
Specific elements for certain CPs
Seek correction when irregular
No substantive examination
“Design” not defined by Hague texts
Public order and morality not checked
No novelty search
Publication in the
International Designs Bulletin
Every Friday, on WIPO’s website
Serves as notification to Designated Contracting Parties
Offices can upload the data into own system (XML)
This takes the place of national/regional publication
Next Stage: Procedure at DCP’s Level
Normal Substantive Examination by Office
Only to the extend it applies to national filings
Formality examination is skipped
Statement of Grant of Protection can be issued
Possible Refusal and Withdrawal of Refusal
On same substantive grounds as for direct filings
Same remedies must be provided to Holder
Must be communicated within time limit
Effect limited to that CP’s territory
Refusal: Mechanism
“refusal”
Petition
Office of CP
substantive examination
IB of WIPO
formal examination
Local agent
Legal opinion
Instructions
Holder
business decision
Notification
Effects of the International Registration
(where not refused)
Same rights as a local design registration
IR becomes a bundle of independent local rights
Duration is 5 years, renewable twice at least
IR offers the advantages of central management
Some Statistics
International Registrations 2007-2012
International Registrations
Growth (%)
2,363
2,440
6.6
3.3
2011
2012
2,216
1,681
1,524
1,137
1,143
1,147
32.9
0.5
0.3
2006
2007
31.8
10.3
-19.7
2005
2008
2009
Year
2010
Designs in International Registrations: 2007-2012
Designs in International Registrations
Growth (%)
11,971
11,238
11,077
8,867
7,941
6,033
6,532
5,599
16.7
21.6
11.7
26.7
-7.2
-1.4
8.1
2011
2012
-25.6
2005
2006
2007
2008
2009
Year
2010
Designs per International Registration (2012)
Designs per International Registration
Growth (%)
799
619
419
355
44.4
-6.1
4.0
17.2
2.6
160
-3.0
-3.0
1
2
3 to 5
6 to 10
11 to 20
International Registrations
19.2
62
26
19.2
44.4
21 to 40
More than 40
Designations per International Registration (2012)
Designations
Growth (%)
710
663
171.4
380
371
241
9.6
23.8
1.3
18.2
1.3
-21.9
57
171.4
1
2
3 to 5
6 to 10
11 to 23
International Registrations
171.4
24 to 33
18
18.2
34 to 54
Most Designated Contracting Parties
2012
10000
8,961
2008
8,802
8000
6000
5,110
4000
2,853
2,531
2,389
2,376
ay
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a
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1,853
2000
1,499
1,494
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Amounts of Fees paid per International
Registration (2012)
IRs
share of total IRs
1,162
775
47.6
11.1
3.01
1.
11.1
31.8
270
11.1
6.3
3.3
153
80
11.1
6.3
3.3
< 1,000 CHF
1,000 to 1,999 CHF
2,000 to 2,999 CHF
3,000 to 4,999 CHF
International Registrations
> 5,000 CHF
Amounts of Fees paid per International
Registration (2012)
IRs
share of total IRs
1,162
775
47.6
11.1
3.01
1.
11.1
31.8
270
11.1
6.3
3.3
153
80
11.1
6.3
3.3
< 1,000 CHF
1,000 to 1,999 CHF
2,000 to 2,999 CHF
3,000 to 4,999 CHF
International Registrations
> 5,000 CHF
2012: Top Filing Contracting Parties
Contracting Party of entitlement (through establishment, domicile,
nationality or habitual residence):
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
European Union
Switzerland
Germany
France
Turkey
Norway
Spain
Poland
Croatia
Liechtenstein
(5168 designs, 41.5%)
(2855 designs, 22.9%)
(1630 designs, 13.1%)
(1265 designs, 10.2%)
(278 designs, 2.2%)
(186 designs, 1.5%)
(101 designs, 0.8%)
(86 designs, 0.7%)
(76 designs, 0.6%)
(73 designs, 0.6%)
2012: Top Filers of International Applications
Country of address of the applicant:
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
Germany
Switzerland
France
Italy
Netherlands
United States of America
Turkey
Austria
Luxembourg
Sweden
(3953 designs, 31.7%)
(2447 designs, 19.6%)
(1425 designs,11.4%)
(926 designs, 7.4%)
(596 designs, 4.8%)
(407 designs, 3.3%)
(341 designs, 2.7%)
(248 designs, 2%)
(200 designs,1.6%)
(183 designs, 1.5%)
2012: International Applications
2,604 international applications received
- containing 12,454 designs (max. 100 designs /
application)
3.3% growth to 2011 in the number of applications
3.5% growth to 2011 in the number of designs
2012: Five Most Popular Classes in
International Registrations
CLASSES
PRODUCTS AND SERVICES
2012
SHARE
Class 9
Packages and containers for the
transport or handling of goods
258
10.6%
Class 10
Clocks and watches and other
measuring instruments, checking
and signaling instruments
242
9.9%
Class 12
Means of Transport
207
8.5%
Class 6
Furnishing
199
8.2%
Class 7
Household goods
159
6.5%
International Registrations in Force
in the International Register
(on December 31, 2012)
Industrial Designs
Right-holders
(8,029)

Industrial designs
by right-holder
Number of
right-holders
1 design
2 designs
3-10 designs
11-100 designs
> 100 designs
All
11-100 designs
27.20%
Registrations
in force
(26,271)
> 100 designs
22.14%
5393
1125
1191
297
23
67.17%
14.01%
14.83%
3.70%
0.29%
8029
100.00%
1 designs
20.57%

3-10 designs
21. 51%
2 designs
8.58%
2012: Designs in International Registrations:
Top Origins
Others
12.8%
Austria
2.4%
Germany
32.1%
United States of
America
3.9%
Netherlands
4.6%
Turkey
2.3%
Italy
7.8%
Belgium
1.5%
France
11.1%
Luxembourg
1.6%
Switzerland
19.9%
Information and IT tools
New E-filing Platform
The new e-filing platform available since June 3, 2013
includes following improvements:
a WIPO User account
facilitated downloading of reproductions
real time checking of certain formalities
saving of applications in progress
fully integrated fee calculator
payment of fees by credit card
…and much more!
Hague Portfolio Manager (HPM)
The HPM will enable access to data uploaded to the
user account, such as the bibliographic data of the
holder and a portfolio of international applications and
registrations,
It will allow as well for interaction between the holder and
the International Bureau.
The HPM will also make it possible to manage portfolios
by allowing for the submission to the International
Bureau of requests for the recording of modifications
through an electronic interface related to a user account.
Thank you!
[email protected]