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Introduction to The Hague System: Protecting Industrial Designs Worldwide

This sub-regional seminar organized by WIPO provides an overview of The Hague System and its main features for international registration of industrial designs. It also highlights specificities for Japan, Republic of Korea, and the United States of America.

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Introduction to The Hague System: Protecting Industrial Designs Worldwide

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  1. Introduction to The Hague System for the International Registration of Industrial DesignsSub-regional seminar organized by the World Intellectual Property Organization in cooperation with the Ministry of Justice of the Republic of Kazakhstan Astana December 9, 2016 Päivi Lähdesmäki Head of the Legal Section The Hague RegistryWorld Intellectual Property Organization

  2. Industrial Designs DM/074502 DM/083330 DM/081900

  3. Why Protect Industrial Designs?

  4. Industrial Designs DM/074502 DM/083330 DM/081900

  5. DM/090 275 DM/082 924 DM/085 377

  6. Contents • Going Global – Geographical Scope of the Hague System • Whatis the Hague System? • Main Features of the Hague System • Trends in 2016 • Specificities for Japan, the Republic of Korea and the United States of America • LatestDevelopments

  7. Going Global – Geographical Scope of the Hague System

  8. Hague Union 52 Geneva Act (1999) (including EU and OAPI) 14 Hague Act (1960) 66 Contracting Parties 84 jurisdictionscovered

  9. Hague System: Foreseen Expansion

  10. Geneva Act (1999) Recent Accessions Potential Accessions

  11. Hague Union Membersaccording to the most recent applicable Act

  12. Hague Agreement Geneva Act (1999) Hague Act (1960) • Common Regulations (1996), last revised: January 1, 2017 • Administrative Instructions (2002), last revised: July 1, 2014 • National Laws and Regulations

  13. Hague MembershipStatus as of November 2016 (by most recent Act)

  14. What is the Hague System?

  15. Independent filings vs. Hague Route Direct/Paris Route The Hague System

  16. Who Can Use the System?

  17. Main Features of the Hague System

  18. Hague System is a Procedural Arrangement Issues such as: are governed by the law of each Contracting Party designated in an international registration

  19. The International Application

  20. The Hague System Procedure: Role of the International Bureau If the International Bureau finds that the international application does not fulfill the applicable requirements, it invites the applicant to make the required corrections within three months from the date of invitation sent by the International Bureau International registration has the same effect as a regularly-filed application in all designated Contracting Parties

  21. The Hague System Procedure (II)

  22. The Hague System Procedure (III)

  23. 2016 Some General Trends under the Hague System

  24. Trends: ContinuingGrowth • 2015: • 3,581 international registrations contained14,484 designs; • Growth (%) 2014-2015: +32.5% registrations, +7.3% designs • 2016 (untilOctober 31): • 4,357 international registrations contained 14,821 designs • Growth (%) to sameperiod in 2015: +56,7% registrations, +30,4 % designs

  25. International Applications per Month

  26. 2016 Some General Trends under the Hague SystemWhoisfiling?

  27. Trends: 2016 (untilOctober 31):TOP 10 origins (designs recorded by country of address of the holder)

  28. Diversification of Origins

  29. Trends: 2016 (untilOctober 31):TOP 10 applicants by designs

  30. 2016 Some General Trends under the Hague SystemWhereis protection sought?

  31. Trends: 2016 (untilOctober 31):TOP 10 Designations (designs recorded by DesignatedContracting Party)

  32. Applications by DesignatedCP

  33. January-September 2016: Five Most Popular Classes in International Registrations

  34. Cost-effectivenessPayment of a single set of fees in one currency

  35. Amount of Fees Paid per International Registration (2015)

  36. International Registrations in Force in the International Register (on December 31, 2015)

  37. 2016 Some General Trends under the Hague SystemDecisions by Offices

  38. Decisions by Offices of DesignatedContracting Parties in 2016 (untilOctober 31) • 1506 Refusals of protection +884,3% increase to the sameperiod in 2015 (153) • 146Withdrawals of refusals (in the sameperiod in 2015: 3)

  39. Specificities for Japan, the Republic of Korea and the United States of America

  40. US, JP and KR Specificities X = Checked and enforced by the IB – no omission possible

  41. Designs per International Registration

  42. Grounds of refusals by JPO (from March 24th, 2016 to October 31st, 2016) Source: Internal (unofficial) statistics Total Grounds for Refusal 671 (100%) Number of refusals by JPO 519 designs (in 254international registrations) Multiple refusal grounds can be listed for why a design was refused, as such the total grounds for refusal can be much higher than the amount of designs. Main grounds of refusals 1. Insufficient Disclosure 259 designs (38.6%) 2. Lack of Novelty 183 designs (27.3%) 3. Ambiguous/broad indication of product 83 designs (12.4%) 4. Conflicting Appl/Regis 40 design (5.9%)

  43. Grounds of refusals by KIPO (from January 12th, 2015 to October 31st, 2016) Source: Internal (unofficial) statistics Number of refusals by KIPO 1591 designs (in 553 international registrations) Total Grounds for Refusal 2081 (100%) Multiple refusal grounds can be listed for why a design was refused, as such the total grounds for refusal can be much higher than the amount of designs. Main grounds of refusals 1. Insufficient disclosure 1059 designs (50.8%) 2. Conflicting Application/ Registration 334 designs (16%) 3. Lack of Novelty 173 designs (8.3%) 4. Ambiguous/broad indication of Product 119 designs (5.7%)

  44. Unity of Design refusals by USPTO (from November 6th, 2015 to October 31st, 2016) Source: Internal (unofficial) statistics Number of refusals 579 designs (in 117 international registrations) Refusal on the ground of Unity of Design enables the refusal of the effect of the International Registration in its entirety, pending restriction to one design Article 13(2) Geneva Act (1999) Grounds of the Refusals 1. Unity of Design as the only ground 450 designs 95 international registrations 2. Other grounds in addition to Unity of Design 129 designs 22 international registrations

  45. Grounds of refusals by USPTO (from November 6th, 2015 to October 31st, 2016) Source: Internal (unofficial) statistics Number of refusals by USPTO 267 designs (in 135 international registrations) Total Grounds for Refusal 545 (100%) Multiple refusal grounds can be listed for why a design was refused, as such the total grounds for refusal can be much higher than the amount of designs. Main grounds of refusals 1. Insufficient Disclosure 177 designs (32.5%) 2. Unity of Design 129 designs (23.7%) 3. Definition of Design 17 designs (3.1%) 4. Others 13 designs (2.4%)

  46. Priority Documents • Original priority documents have to be sent directly to the USPTO at the latest before “the date the issue fee is paid”.

  47. Latest Developments * http://www.wipo.int/edocs/hagdocs/en/2016/hague_2016_9.pdf

  48. Guidance on Preparing and Providing Reproductions Available from 10 August 2016 at: English: http://www.wipo.int/export/sites/www/hague/en/how_to/pdf/guidance.pdf French: http://www.wipo.int/export/sites/www/hague/fr/how_to/pdf/guidance.pdf Spanish: http://www.wipo.int/export/sites/www/hague/es/how_to/pdf/guidance.pdf

  49. Hague Express / Global Design Database

  50. Legal Developments • Sixth session of the Working Group on the Legal Development of the Hague System, June 20 to 22, 2016 • Rule 5 of the Common Regulations, as amendedwill come in force on January 1, 2017: «Safeguardmechanism» in respect of failure in electronic communication with the International Bureau; • Amendments to Rules 14, 21 and 26 will come into force once the IT infrastructure isready.

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