The Hague System for the International Registration of

The Hague System for the International Registration of Industrial Designs Sub-regional seminar organized by the World Intellectual Property Organization in cooperation with the Ministry of Justice of the Republic of Kazakhstan Päivi Lähdesmäki Head of the Legal Section The Hague Registry World Intellectual Property Organization Astana December 9, 2016

Hague System

How to file an application - Good to know q NO national application is required q It is possible to designate the applicant’s Contracting Party q NO subsequent designation q Declarations made by the CP to be taken into consideration

Contents E-filing Interface; Formal Examination by the International Bureau; Recording and Publication of the International Registration; Subsequent Management of the International Registration

Where to find the tools? wipo. int/hague

How to file an application q Directly with IB of WIPO q e-filing https: //www 3. wipo. int/login/en/hague/index. jsp q Paper (DM/1 form) http: //www. wipo. int/hague/en/forms q Indirectly through the Office of the Contracting Party

Where to find the tools? wipo. int/hague

E-Filing: Main features File an international design application Real-time checking of certain formalities; Fully integrated fee calculator; Instant acknowledgement of receipt; Auto-save; Portfolio of applications already sent or in preparation (workbench) Templates Current status of application Reply to irregularities online (New) Send corrections to irregularities or defects Receive and download notifications

E-Filing form Real-time checking of certain formalities; Fully integrated fee calculator; Instant acknowledgement of receipt; Auto-save;

E-FILING PORTFOLIO MANAGER

Portfolio / Workbench 1. Portfolio Status 2. Manage your applications 3. Reply to irregularities online 4. Logging out

Filing an international application

Filing an international application

Filing an international application

Filing an international application

Filing an international application

Filing an international application

Filing an international application

Filing an international application

Hague System Fee Calculator

Reply to irregularities online

Reply to irregularities online 1. Action Required – reply to invitations to correct irregularities 2. No Action Required – to retrieve observations and abandonment letters 3. Archived – to retrieve previous notifications

Reply to irregularities online 1. Response the text field 2. Documents in PDF format: define type 3. Reproductions: indicate the number of the design and reproduction (i. e. 2. 3 = design number 2, reproduction number 3)

The Role of the International Bureau

Formal examination by the IB Mandatory contents (Rule 7(3)) • E-Filing automatically checks that mandatory contents are filled in, such as product indication or data concerning the applicant Additional mandatory contents (Rule 7(4)) • E-Filing «alerts» if additional mandatory content is missing, such as identity of the creator (, where designated CP has made a declaration under Rule 8(1)(a)(i)) Optional contents (Rule 7(5)) • If filled in, the IB checks (, such as description)

Mandatory contents of an application q Request for international registration q Applicant’s details q Reproductions q Product indication q Indication of the designated CP q Fees

Product indication and Locarno classification q Industrial designs are classified in accordance with the product indication Class 32 -00 DM/081718; “Ornamentation” Class 09 -05 DM/084887; “Ornamentation for packaging bags”

Locarno classification - Mono class Class 6 Chair Cabinet Dining table Sofa Corner table DM/083137

Locarno classification: Multiple classes Class 12 DM/081329 Class 6 Class 26 DM/084440 DM/073710

Additional mandatory contents of an application q Creator details and/or Oath of the creator q Description q Claim

Optional contents q Creator q Description q Legend q Priority claim q International exhibition q Publication

§ Example of descriptions to clarify the design and scope of protection: Dot-dashed broken lines Descriptions for visually different types of broken lines: Ø The evenly spaced broken lines illustrate the portions of the vehicle tire that form no part of the claimed design; Ø The dot-dashed broken lines indicate the boundaries of the claimed design and form no part of the claimed design. Evenly spaced broken lines DM/088295: Vehicle tire

Description - Disclaimer Description: Design 1: the handle and the key hole, shown in broken lines, are not part of the claimed design; DM/084412; “Door fittings”

Optional contents q Exception to the lack of novelty q Relation with the principle design q Appointment of the representative q Information on eligibility for protection q Economic status and certificate where applicable q Locarno classification

Requirements concerning the reproductions q Legal framework q Article 5 (1999 Act/1960 Act) q Rule 9 of the Common Regulations q Administrative Instructions – Section 401 -405

Views Six views: JP: Front, back, top, bottom, left, right view by the orthographic projection method are mandatory (Declaration under Rule 9 (3) ) KR, US: Six views are recommended, not mandatory

To Sum Up Role of the International Bureau ● Formal examination (are the formal requirements met? ) ● Registration and recording in the International Register ● Translation and Publication in the International Designs Bulletin ● “Notification” to Designated Contracting Parties (through the publication of the Bulletin on WIPO website) Effects of the international registration at this stage ● Same effect as a regularly filed national application in all Designated Contracting Parties

EFFECTS OF AN INTERNATIONAL REGISTRATION

Effects of an IR under the 1999 Act After publication (Article 14(1)) = effects as application from the date of IR, at least If no refusal is notified (Article 14(2)(a)) = effects as a grant of protection, in principle, at the latest from the expiry date of the applicable refusal period (6 or 12 months) If the refusal is withdrawn (Article 14(2)(b)) = effects as a grant of protection at the latest from the date on which the refusal was withdrawn

Effects of an IR under the 1999 Act “Two exceptions” to Article 14(2)(a) applicable through an additional declaration by a CP (whose Office is an “Examining Office” or whose law provides for an opposition procedure) opting for 12 month refusal period Option 1 (Rule 18(1)(c)(i)) The latest time at which protection must be granted may be extended up to 6 months after the expiry date of the 12 -month refusal period CPs: Spain, Turkey, USA

Effects of an IR under the 1999 Act “Two exceptions” to Article 14(2)(a) - continued Option 2 (Rule 18(1)(c)(ii)) Protection will be granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the applicable refusal period. = Protection can be granted even after the refusal period, but only in exceptional circumstances. CPs: Japan, Republic of Korea, USA

REFUSAL AND OTHER OFFICE ACTIONS

Substantive Examination by the Office Substantive examination, if any, undertaken by the Office of a designated CP as provided by its national law Refusal must be sent to the IB within the set time limits from the date of publication of the IR Holder has same remedies as would have been available if filed as a national application If not refused, or if refusal withdrawn, the IR produces the same effect as a grant of protection under the national law

Office Actions Refusal Withdrawal of Refusal Statement of Grant of Protection Invalidation

Refusal Mechanism Office of a Designated CP “refusal” substantive examination formality check “withdrawal” ? “response” Local agent Holder

Refusal: Time frame Principle: 6 months (Article 12(2) of the 1999 Act and Rule 18(1)(a)) Exceptions (Rule 18(1)(b)): (which may be opted for by a Contracting Party whose Office is an “Examining Office” or whose law provides for an opposition procedure) The period may be extended up to 12 months

Refusal: Basic principles Within refusal period: starting from the date of international publication Provisional objection: which may become a final decision, without further notification Languages: English, French or Spanish Total (for all the designs) or partial (for some of the designs only)

Refusal Ground: No formal ground Principle: substantive grounds only (incl. opposition) Exceptions: requirement as to unity of design (Article 13) * specific views of the design not furnished (Rule 9(3)(a)) * * Declarations possible only under the 1999 Act

Refusal Ground: Typical substantive grounds Definition of an industrial design Type of design not protected (ex. “logo”) Disclosure insufficient to figure out the design Public order and morality Conflict with prior applications / registrations Novelty Creativity / Non-obviousnes

Rule 9(4) of the Common Regulations No refusal on formal grounds. Refusal possible on the ground «that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design» Criteria for sufficient disclosure of an industrial design may be different from one jurisdiction to another.

What causes the disclosure of the design to be insufficient and the representation of the design to be unclear? § Lack of a sufficient number of views § Lack of /or inadequate surface shading § Lack of consistency among the views § Lack of a description to clarify the scope of protection

Lack of / or Inadequate Surface Shading The exact contours of the product and the specific portions of the product for which protection is sought are unclear without surface shading Indication of product: “Pharmaceutical tablet” 1. 1 1. 2 1. 3 1. 4 Perspective Top Bottom Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices Front

Lack of / or Inadequate Surface Shading Adequate and proper surface shading clarifies the contours of the design and the scope of protection sought 1. 1 1. 2 1. 3 1. 4 Perspective Top Bottom Front * JP: submitting sectional views or perspective views to represent relief or contours of surfaces of the product is a more preferable way than providing shading Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices

Unity of design: Declaration under Article 13(1) If the applicable law provides for any of the following types of requirement at the time it becomes party to the 1999 Act Design 1 Design 2 Design 3 Each of the designs must conform to a requirement of unity of design, unity of production or unity of use (have a similarity in appearance, production or use of the product) Design 2 Design 1 Design 3 Each of the designs must belong to a set of products Only one design may be the subject of a single application The CP may make a declaration under Article 13(1) of the 1999 Act. The CP may issue a refusal if the specified requirement is not complied.

Specific views: Declaration under Rule 9(3)(a) International Bureau No requirement as to the types of views. A single reproduction is enough. The law of the CP If the law provides for certain types of views that must be submitted, the CP may specify, in the declaration, the views required and the circumstances in which they are required. One perspective view Six orthographic views Front view + top view + right side view (Front view + Top view + Right side view + Left side view + Rear view+ Bottom view) Front view + one perspective view Two perspective views showing a whole appearance of the product etc.

Withdrawal of Refusal / Statement of grant of protection After refusal - Notification of withdrawal of refusal (Rule 18(4)) - Statement of grant of protection (Rule 18 bis(2)) Where no refusal - Statement of grant of protection (Rule 18 bis(1)) - within the applicable refusal period - optional but recommended

Withdrawal of Refusal / Statement of grant of proteciton: Amendments of design Where amendments are made to the design in a procedure before the Office, and the design as amended is accepted, a statement of grant of protection (or notification of withdrawal of refusal) must be sent, with the information concerning the amendments (new Rules 18(4) and 18 bis(1) and (2)). Information concerning the amendments will be made publicly available by the IB, through the Bulletin.

Withdrawal of Refusal / Statement of grant of protection: Amendments of design Office of a Designated CP Amendment accepted, refusal ground remedied amendment “refusal” “withdrawal of refusal or statement of grant of protection” “notification” “publication in the Bulletin” Design as amended “response” Local agent Holder

Bundle of Rights under the Hague DM/087141 Statement of grant of protection: EM, JP, KR Notice of allowance: US Registration Number Product Holder DM/087 141 Brush for animals SSERTSON GROUP 23 avenue de SURY, F-42160 BONSON (FR)

Bundle of Rights under the Hague DM/088 829 Statement of grant of protection: EM, JP, KR Notice of allowance: US Registration Number Product Holder DM/088 829 Shoe VALENTINO S. P. A. Via Turati, 16/18, I-20121 MILANO (IT)

Bundle of Rights under the Hague DM/087158 Statement of grant of protection: EM, JP, KR Notice of allowance: US Registration Number DM/087 158 Product Base for a safety child seat Holder CYBEX GMBH Riedinger Strasse 18, 95448 Bayreuth (DE)

Invalidation Office or court decision which is made after producing protection (Rule 19) Remarks: Outside the “Refusal” mechanism “Post-grant opposition” included Opportunity to defend the right Only the final decision

Renewal – Paper Form or Electronic Form Paper form: form DM/4 E-renewal interface: Online service https: //webaccess. wipo. int/erenewal_dm/erenewal. jsp? lang=EN Online payment (current account or credit card)

E-Renewal

Summary: Post-Registration Procedures The holder may request: Renunciation reduction of the scope of the IR Limitation prolongation of the IR Renewal transfer IR to new owner Change in Ownership update information about the holder Change in name and/or address of the holder representation before the International Bureau Appointment, change or cancellation of representative

E-Payment

Help and guidance How to file your application Gives an overview on how to file an international design application http: //www. wipo. int/hague/en/how_to/file/ Hague Guide for users Provides in-depth information with legal references http: //www. wipo. int/hague/en/guide/ia. html Hague System E-Filing Tutorial Describes how to use the interface http: //www. wipo. int/hague/en/how_to/efiling_tutorial/index. html

THANK YOU! MORE INFORMATION AT www. wipo. int/hague/en Thank you! www. wipo. int/hague