Feature

The International Design Registration: Maintaining National Personality and Acquiring It All at Once

Vincenzo Melilli

©2016. Published in Landslide, Vol. 8, No. 5, May/June 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The general interest in industrial design protection has been exponentially growing over the years (see fig. 1). Designs, which—especially in Europe—are not strictly intended as patents, play a crucial role in the protection of the external appearance of products.

Figure 1

Overview

The Hague System is a procedural arrangement regulating acquisition of rights in more than one country on design/design patents by a single step consisting of an application for a “bundle of rights.” The implications of being a bundle of rights affect the actual practice and strategical choices of the users due to the perception of the unity of the system while, in contrast, the governing law of each geographic extension is the applicable law of each designated contracting party. This shows why there is no international design case law and no international design subject matter jurisdiction. Each court is entrusted with the design case as if it were a single national registration, making no particular difference between the industrial design registered as a portion of the Hague System or as a national filing.

The interest in registering international designs has reached a peak because of the ratification of the Hague System by the Republic of Korea, Japan, and the United States. The so-called “Hague Agreement” is composed of the London Act (1934, frozen as from January 1, 2010),1 the Hague Act (1960),2 and the Geneva Act (1999),3 which is the most representative act and has recently been subject to discussion because of the number of member states (49 including the European Union (EU) and the African Intellectual Property Organization (OAPI)).

The Hague System serves industrial design holders that would centrally acquire and maintain their rights in one or more contracting parties. Currently, the Hague Union is composed of 64 contracting parties (49 to the Geneva Act and 15 to the Hague Act; see fig. 2). The increase in the number of contracting parties clearly makes the Geneva Act more attractive to new countries, leading to the recent accessions of the United States and Japan (as of May 13, 2015) and the Republic of Korea (as of July 1, 2014). New potential accessions, which would generate a massive geographic coverage, are China, which is showing a strong interest in design registration (see fig. 3), the Russian Federation, Israel, Mexico, and ASEAN countries. Furthermore, a debate at the office level is underway in connection with Canada, whose accession might occur as early as 2017.4

Figure 2

 

Figure 3

The prerequisite entitling an applicant to file an international design application is a link with one or more contracting parties to the Hague Agreement,5 namely:

  • being a national of a state that is a contracting party;
  • having a domicile in the territory of a contracting party;
  • having a real and effective industrial or commercial establishment in the territory of a contracting party; or
  • having a habitual residence in a contracting party (applicable to Geneva Act only).

The Hague System is simple and cost effective. In fact, a minimum of formality enables applicants to obtain international registration at the International Bureau. Unlike direct national applications—generating many registrations entirely prosecuted by national offices without being linked to each other—the Hague System allows for one application in one language and only requires one set of fees to be paid. In other words, the design holder would file a single international application designating one or more contracting parties in a bundle of rights so that if the International Bureau issues no refusal, protection of the international registration would be granted in every designated extension. However, at the time of the application the applicant must select the contracting parties because no additional territorial extensions may be filed on a later date.

The process begins with a formal examination of the International Bureau verifying the mandatory contents of the application.6 After the certificate of registration has been issued and the registration published in the International Designs Bulletin, the international registration will have the same effect as an application filed at the national offices of all the designated contracting parties.

An international design application does not require prior national applications and, consequently, is protected internationally in all designated territories at once for the first time. Because there is no basis for the registration, there is no possible “central attack” challenging the international registration in its entirety. Thus, if needed, every single designation may be challenged separately in accordance with the law and practice of the contracting party’s jurisdiction. In addition, the applicant may file up to 100 designs, provided that they belong to the same Locarno Classification, and at the same time may request publication to be deferred7 for 12 months or less (under the Hague Act) or for 30 months or less (under the Geneva Act).8

Unless the International Bureau raises formal issues at the time of receipt9 of the application, the publication in the International Designs Bulletin will result in notification of the design to each contracting party. The International Bureau may not raise objections as to the types of views submitted; in fact, a single view suffices and will allow the preliminary formal examination to proceed more smoothly.10 In contrast, if the law of the contracting party requires particular views, that designation may be refused pending compliance with such requirements. Thereafter, at this stage, each national office will be in charge of substantive examination in accordance with its own practice, and loss of design protection in one designated country does not affect the international design in the remaining jurisdictions.

OHIM and USPTO Adjustments into Hague System

Although the basics of the Hague System are very encouraging, there are controversial issues, in particular those dealing with harmonization. In fact, the Hague System creates a “bundle of rights” that is generated by a single application while it is currently subject to the requirements of each national office and their subsequent, possible refusals. On the one hand, the practice of many offices, including the Office for Harmonization in the Internal Market (OHIM), is very lenient toward design application requirements, allowing the registration of designs that would never be allowed in other jurisdictions. As a result, design holders deciding to file an international application should make circumstantial and detailed considerations prior to the application, taking into account both the requirements of the International Bureau and the local requirements of each contracting party designated in the international design application.

Methodologically, the approach of OHIM and the U.S. Patent and Trademark Office (USPTO) toward design registration is very dissimilar. The leading difference is first terminological: “design” and “design patent” indicating that the nature of the protection as well as the two different tools are made on a distinct basis even if aiming at the same purposes. The OHIM requirements of protection are the following: a representation of the design, which must be novel and have individual character.11 On the other hand, for a design patent to be granted at the USPTO, it is required to be new, original, ornamental, and for an article of manufacture.12 Also, it has to be fully and clearly described and has to be claimed in only one independent and distinct design.13

In order to be as pragmatic as possible, table 1 provides a selection of some samples of recent community designs that have smoothly matured into registrations at the OHIM but would have failed to fulfill the USPTO requirements. Regardless of the OHIM and the United States both being contracting parties of the Hague System, it appears from the first definitions that they would not easily fit into the same kind of protection.

Table 1—Multiple Designs

Although the International Bureau as well as the OHIM allows an application for multiple designs within the same Locarno Classification, the USPTO might still issue a refusal due to lack of unity of design, requesting that the multiple design registration be divided into different designs.14 In other words, after registration and publication of the international multiple design, the USPTO would issue a refusal requiring that it be restricted15 or divisional applications be filed.

Table 1

Deferment of Publication

Theoretically, the international registration is published six months after the date of the international registration. In fact, through the Hague System, applicants may request that the publication be deferred for a period that may not exceed 12 months (under the Hague Act) or 30 months (under the Geneva Act) from the filing date. Nonetheless, under the Geneva Act, whether deferment is possible or the maximum deferment period allowed is subject to the law of each contracting party.16

In this particular case, because deferment of publication is available at the OHIM and not at the USPTO, designating the OHIM and the United States will result in no deferment because the publication will take place at the expiry of the shortest period (as a national requirement) among the contracting parties designated.17

Photographs and Colors as Features of the Design Application

Unlike the OHIM practice where colors and photographs are acceptable in the drawings submitted, the USPTO does not allow colors and photographs unless it is explained why the color drawings or photographs are necessary.18 In any case, the requirements relating to the submission of photographs and colors are so strict that it is almost impossible for a design patent to be granted on such a basis.

Change in Ownership and “Lapse” of International Designs: Crucial Tips

The Hague System entitles the design holder to record changes of ownership. The International Bureau is not obliged to investigate the nature and validity of a newly amended ownership. In fact, the term “change of ownership” used in the Hague System applies to any kind of transfer or modification of the holder; therefore, the intrinsic elements of the change and its validity are irrelevant to the International Bureau.19 As a result, the governing law entering into the merits of each possible legal enforcement of changes in the ownership is the law of the contracting parties.

Notwithstanding, there are two relevant points having a huge impact on the fate of the international design registration of which it is crucial to be aware beforehand20:

  1. The new owner must be entitled to file an international design application; and
  2. There must be a common treaty between the new owner and each of the designated parties.

These requirements might affect the further validity of the designs not necessarily at the time of the changes but potentially afterward. In other words, not only is it required that new owners are already a contracting party, but it is also required that all the designated contracting parties to which the international design registration is assigned be part of a common treaty. If these requirements are not met, the change of ownership may not be recorded.

At first sight, the impact of not being able to record a change in ownership does not seem to be so severe even if most of the larger entities would need such an amendment to be recorded for purposes unrelated to intellectual property rights. For instance, a U.S. holder assigning its international design registration to a Canadian or Mexican entity would not be allowed to record such a change. However, the main problems would arise at the time of renewals. In fact, renewals of an international design registration whose holder is an entity that does not own it anymore, in theory, would result in an invalid renewal. The International Bureau is currently working to solve this problem among others.

Grégoire Bisson, the director of the Hague Registry, is convinced that the more the Hague System is used, the more it will reach higher standards of effectiveness, especially addressing the main issues that only users may highlight. Moreover, the director appears confident that very soon the number of contracting parties will drastically increase, thus solving the most crucial key issues of the Hague System.21 For instance, had Canada or Mexico been part of the Geneva Act, the “change of ownership issue” would be pointless, therefore avoiding the potential invalidation of the renewals.

Conclusions and Keyword: Flexibility

As the director of the Hague Registry consistently confirms, the compromise of the contracting parties when entering the Hague System is to offer flexibility. In this regard, for instance, the United States has made important changes affecting its law and practice. In fact, the term for a U.S. design patent—designated in the Hague System—has been amended from 14 years to 15 years from the date of patent grant. Despite the different approach of each contracting party (i.e., the OHIM term is five years renewable up to 25 years), the U.S. system has shown valuable flexibility, changing its own basic rules to allow the international registration to be handled every multiple of five years. The same can be said about “provisional rights,” which are available from the date of publication of the international designs (in other words, even before being prosecuted by the USPTO).22

On the other hand, not only is the USPTO prevented from issuing a refusal solely based on submission of design drawings with colors or consisting of photographs, but it also has to demonstrate extra flexibility—as the director of the Hague Registry says—in taking into account those submissions without “prejudice” and with no requirement on the part of the design holder to file the particular circumstances for which colors have been included and/or photographs submitted.

An additional matter, which the Hague System does not address, is “conversion” of the international design registration into national design registrations when and if needed. In fact, the Madrid System for International Trademarks as well as the OHIM’s Community Trademark System allow, in particular circumstances, for an international trademark registration to be converted into a national registration maintaining the first filing date. This “loophole” would greatly enhance the Hague System process (e.g., assignment to a Canadian/Mexican entity) because it would preserve the design rights acquired. Needless to say that “conversion” should be considered as a “continuation of the registration”; otherwise, if considered a new application, principal issues such as novelty would arise. No conversion is provided by the Hague System.

Notwithstanding, the international registration is an opportunity. In fact, the Hague System is one of the options for global registration of designs. Although it is one of the best options (especially now with the new accessions), it is not the only one, and users must take into account all benefits as well as the negative implications when ultimately making an informed choice. Instead of finding loopholes to address any issues, the main intention of the International Bureau is to enlarge the territorial coverage of the Hague System as much as possible. This would surely cut many of the problems raised. Finally, as the director says, the evolution of the Hague System is in the hands of the contracting parties and not of the International Bureau, which has just facilitated the negotiations to reach a “perfectible” system.

Endnotes

1. Hague Agreement Concerning the International Registration of Industrial Designs, June 2, 1934 [hereinafter London Act].

2. Hague Agreement Concerning the International Registration of Industrial Designs, Nov. 28, 1960 [hereinafter Hague Act].

3. Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999, 2279 U.N.T.S. 3 [hereinafter Geneva Act].

4. Interview with Grégoire Bisson, Dir. of the Hague Registry (Sept. 24, 2015).

5. Geneva Act, supra note 3, art. 3; Hague Act, supra note 2, art. 3.

6. Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement R. 7(3)–(4), 8(3) (effective Jan. 1, 2015) [hereinafter Common Regulations]; Geneva Act, supra note 3, at art. 5(2)(a), (b).

7. Common Regulations, supra note 6, at R. 7(1)(ii).

8. Geneva Act, supra note 3, at art. 11(1); Hague Act, supra note 2, at art. 6(4)(a).

9. Common Regulations, supra note 6, at R. 14(1), (3).

10. Id. at R. 9(3)(a).

11. Council Regulation 6/2002, art. 4(1), Community Design Regulation, 2002 O.J. (L 3) 1 (EC); Commission Regulation 2245/2002, art. 1(c), Community Design Implementing Regulation, 2002 O.J. (L 341) 28 (EC).

12. 35 U.S.C. §§ 102, 103, 171.

13. Id. § 112(a), (b).

14. Geneva Act, supra note 3, at art. 13(1).

15. 35 U.S.C. § 121.

16. Geneva Act, supra note 3, at art. 11(1)(a).

17. Id. at art. 11(2)(iii).

18. 37 C.F.R. § 1.84(a)(2).

19. Common Regulations, supra note 6, at R. 21(2)(v).

20. Geneva Act, supra note 3, at art. 3; Common Regulations, supra note 6, R. 21(2)(iv).

21. Interview with Grégoire Bisson, supra note 4.

22. 35 U.S.C. §§ 122(b), 390.

Vincenzo Melilli

Vincenzo Melilli is a senior associate in the Foreign Department of Bugnion S.p.A. His practice focuses on EU trademark and design law for domestic and international clients. He also lectures on trademark and design law, as well as comparative intellectual property strategies at universities.