Ludmila Celisová Designs Service, OHIM Giuseppe Quinterno Senior Partner and Member of the Board Jacobacci & Partners Marcus Höpperger Director of the Law & Legislative Advice Division Brands & Designs Sector, WIPO Chair: Susie Arnesen Partner, Attorney-at-Law Sandel, Løje & Partnere
Development and comparison: • EU filings (i.e. OHIM) • 75,000 designs yearly • Registered Community designs since May 2003 (450,000 registered designs in force) • International filings (i.e. WIPO) • 12,000 designs yearly • International registrations under the Hague Agreement (109,000 registered designs in force) • National filings (e.g. CZ IPO) • 1,200 filed designs yearly • National registrations since 1962 (12,000 registered designs in force) • A starting point for individuals and SMEs for affordable costs (€ 30/15 per • design) • A step before EU or international protection with the benefit of national priority • A complementary system of substantive examination to the community • registration without examination
Hague Union 45 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960)________________________________________ 60 Contracting Parties
In 2008 EU acceded to Geneva Act of Hague Agreement. • Designation of EU = protection as registered Community Designs. • The gate of access for legal and natural persons residing or operating within EU into more than twenty countries and regional territories out of EU. • 20 individual memberships of EU states. • However, national entities enjoy the advantages of the international registration system even though an EU state is not a member of the Hague system. • Most active applicants from Germany and France. • In 2011 almost 4,500 designs filed from EU. • In 2011 over 9,000 designs filed to claim protection in EU.
Potential Accessions to the Geneva Act • Korea • USA (the Bill has already been signed, foreseen accession by end of 2013) • China (possible accession by the end of 2013) • Japan • Russian Federation • Morocco • ASEAN Countries (announced for 2015) • Trinidad and Tobago • Barbados • Brunei • Madagascar
New E-filing Platform A new e-filing platform available before the end of this year which will include following evolutions and improvements: • a WIPO User account • facilitated downloading of reproductions • automatic check and transformation of images • integrated fee calculator • payment of fees by credit card
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.
Filing an RCD at OHIM vs. Filing an International Application designating the EU via WIPO
Who can file? OHIM: any natural or legal person. WIPO: any natural or legal person having an entitlement (nationality of a EU Member State, or domicile, or commercial or industrial establishment, or habitual residence in a EU Member State). Language OHIM: any official language of the Community (need to indicate a second language chosen among the official languages of OHIM: Spanish, English, French, German and Italian). WIPO: English, French, Spanish.
Deferment of publication OHIM: up to 30 months from filing date (or priority date); deferment involves payment of an official fee. WIPO: up to 30 months from the filing date (or priority date); no deferment fee applicable.
Number of designs/models in one application OHIM: no limit. WIPO: up to 100 designs. Number of views for each design/model OHIM: a maximum of seven views. WIPO: no limits.
Costs OHIM and WIPO have different schedules of Official Fees: convenience to file with one or the other depends on number of designs, number of views, deferment of publication, etc. OHIM: see website for calculation of fees. WIPO’s fee calculator (in Swiss Francs) at: http://www.wipo.int/hague/en/fees/calculator.jsp
Fee schedule – Basic Fee OHIM • 1st design ...................... € 230 • 2nd – 10th design ........... € 115 each • 11th design + ................. € 50 each WIPO • 1st design ..................... CHF 397 ( € 318) • 2nd – 10th design ........... CHF 67 each ( € 54 each) • 11th design + ................. CHF 67 each ( € 54 each)
Fee schedule – Publication Fee OHIM • 1st design ................. .... € 120 • 2nd – 10th design ........... € 60 each • 11th design + ................. € 30 each WIPO • each design ..................... CHF 17 ( € 14) Fee schedule – Deferred Publication OHIM • 1st design ....................... € 40 • 2nd – 10th design ............ € 20 each • 11th design + .................. € 10 each WIPO • no fee for deferred publication
E-Filing Interface OHIM: Allows to save and restore the application form. WIPO: application form must be completed on-line.
Register of International Registrations (IR) OHIMdoes not keep a Register of IRs, not eventhosedesignating the EU: the International Bureau of WIPO does! (Whensearching the RCDs in the name of a given subject, besidessearching in the OHIM Database, alsosearch in the Hague Express Database of WIPO).
International Classification for Industrial Designs under Locarno Agreement “the Locarno Classification” • Signed 8 October 1968 (amended 28 September 1979). • 32 Locarno classes and their 219 sub-classes (7,024 indications of products to navigate the users through the classification). • Products are classified first according to their purpose and subsequently according to the object that they represent. • The classification is equipped with short notes giving clue in which class/sub-class a product is classified. No definitions of the objects which the indications of products represent. • Too vague to narrow searches sufficiently (noise), inconsistency in classes and subclasses, no synonyms or homonyms rules…
10th edition adopted by Locarno CE in October 2012 - entry into force on 1 January 2014. • CE renewed expression of interest in index for visual design features. • Locarno Pilot Group in charge of development of such a system. • Continued testing of system so far developed + explore other systems. • CEL/11/2
Retrieval of designs information: • The goal is to find design rights in force but also prior art with a functional tool responding to the growth of databases of IPOs, OHIM, WIPO... • ...either by revision of the International Classification for Industrial Designs, or • by another way reflecting the nature of designs – the appearance features (indexing the designs with controlled vocabulary, automatic recognition of pictures). (Pilot Working Group of Locarno Union, OHIM Cooperation Fund projects)
Object v purpose v function • A holder v advertising unit v a spare part of means of public transport:
Ideally • Classification by object regardless its function:
Pilot Working Group of Locarno Union/OHIM Cooperation Fund: • - A third level of classification is considered as complementary to the class/sub-class structure of Locarno classification. • - Two classifications in one: • first and second level of Locarno classification = function; • a six digit code in third level = object or appearance of a product or its part. • - A single position for each product or a group of visually similar products regardless their function. • - Cross-references excluding synonyms. • - Cross-references excluding homonyms. • - Pictorial and verbal definition of each product. • - Classification of visual features of shapes, decorative elements, colours and material.
Search by combination of the terms: • 06-01-02 chairs AND 00-01-17 wooden pattern • 06-01-02 chairs AND 00-01-17 wooden pattern AND 06-06-01 armrests • 06-01-02 chairs AND 00-01-17 wooden pattern AND 00-01-20 triangular in plan • 06-01-02 chairs AND 07-01- cups • 06-06-08 casters • 06-01-02 chairs AND 06-06-08 casters
Two design projects within OHIM Cooperation Fund: Search Image, a software tool to enable images to be searched for on relevant databases, either by code or by use of an image recognition ability; and DesignView, the portal for registered design information from participating national offices, OHIM and WIPO. • Should integrate Search Image