IP-Fälle und Artikel

WIPO new email address requirements for Hague design registrations

In a bid to push through to communication via entirely electronic means, new legislation from WIPO, which came into effect from 01 February 2021, now requires any international Hague design application submitted on or after this date to provide an email address for the applicant of the Hague design application. Failure to provide such an email address for the applicant when submitting the application will result in an irregularity notice, which if not ultimately remedied, will result in the application being deemed abandoned.

The obligation to provide an email address for the applicant will apply even if they are represented by an agent or other legal representative, who will also now be obligated to provide a contact email address as part of the initial application.

This rule change will also apply in respect of any change in ownership of a Hague design registration matter which is recorded at the World Intellectual Property Organization (WIPO) after 01 February 2021. Specifically therefore, any new owner details after this date will need to contain a contact email address for the new owner, along with a contact email address for any appointed representative they may wish to also appoint.

For many, this new requirement to provide a contact email address for the applicant/owner of a registered design application may come as a surprise, noting many other design registries around the world do not mandate the provision of this email address. In any case however, noting WIPO’s intention to primarily make use of a provided email address as the primary means of contact for any given entity moving forward, it is suggested that any entity seeking use of the Hague design registration system ensure that any provided email address for the Hague design registration matter is kept up-to-date, and is appropriately monitored by personnel who are familiar with matters relating to intellectual property.

In so far as any email address is provided for a given entity before WIPO in respect of a Hague design registration matter, WIPO has pleasingly confirmed that this email address will not readily be available for public inspection in so far it will not be made available in the International Designs Bulletin, or some of the design databases relating to Hague design registration matters (such as the Hague Express database or the Global Design Database).

Similarly, in so far as an electronic communication from the WIPO relating to a Hague design registration matter fails to reach its intended recipient, WIPO has also since confirmed that that it will continue to send the communication by postal service as well.

Concerning the above changes by WIPO, it is clear that they represent a progressive shift by design registries around the world in moving to electronic communications as the default/norm. Indeed, this shift by other design registries can also be seen in respect of the EUIPO, which handles EU design registration matters, which from 01 March 2021 will prohibit the use of facsimile transmission as a means for contacting the EUIPO (for further information please see the link below). As well, this shift towards electronic communications being the default can be seen in other areas, not least in respect of the EUIPO’s recent accession to the DAS system, as reported previously.

For further information in respect of this new requirement, or for continuing updates on design registration matters more generally, do contact the author William Burrell, or any of the members of the D Young & Co designs team.

Time to say goodbye to fax transmission to the EUIPO

D Young & Co partner Jana Bogatz discusses the EUIPO decision to abolish fax communication for EUTM and registered Community design procedures for the MARQUES Class 46 blog, a weblog dedicated to European trade mark law and practice.

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WIPO information notice no.41/2020: “email address" as a required indication

WIPO information notice regarding new email address requirements, effective from 01 February 2021.

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Design-Buch Europäischen Designrecht
Design-Buch Europäischen Designrecht
Design protection Are you protecting your designs?
Design protection Are you protecting your designs?