Hague design registrations: where’s my stamp of approval?
In the context of obtaining design registration protection, in many territories around the world, one of the mechanisms for achieving this protection is via use of the international Hague design registration system, operated by the World Intellectual Property Organization (WIPO), based in Geneva.
With a Hague registered design application the owner must designate, when the application is first made to WIPO, which territories are to be covered under the application.
Once the registered design application is submitted, the application is then subjected to an initial form of examination by WIPO, which checks whether the application meets a number of formal requirements to allow it to be published or registered on the international designs register, which can be accessed using the Global Design Database (www3.wipo.int). Hague design registrations are typically published weekly, every Friday.
Once the Hague design registration is published by WIPO each of the official design registries for the various territories, which are designated under the Hague design registration, then have a period of time in which to object to the maintenance of the Hague design registration in their territory. This period lasts for, at most, 12 months following the date when the Hague design registration is published by WIPO, though for a number of territories this objection period is shortened to six months (including the UK and the EU). If no objection is sent by the relevant design registry to WIPO within the relevant period the Hague design registration is then deemed to cover the territory relating to that design registry.
Mindful of the above general procedure, the extent to which each of these design registries communicates its acceptance of a Hague design registration designating its territory, varies. Some design registries operate a policy of “no news is good news” , whereby the design registry will only issue a communication to WIPO if it considers there to be an issue with the maintenance of the Hague design registration in its territory. In contrast, other design registries provide a positive “statement of grant” notice in the event that they consider the design registration to be allowable in their territory.
Noting this discrepancy in practice, at the time of writing, there is evidence of at least the following design registries issuing positive statement of grant notices, in the event that a Hague design registration designating their territories are deemed allowable by the design registry in question:
|Hague design registration territory|
|European Union (EM)|
|Republic of Korea (KR)|
|United States of America (US)|
By contrast, there is evidence of the following design registries not issuing positive statements of grant notices in the event that a Hague design registration designating their territories are deemed allowable by the design registry in question:
|Hague design registration territory|
|United Kingdom (GB)|
Note that it possible to track the issuance of any positive statement of grant notice(s) for a published Hague design registration by checking its associated Global Design Database record. You can copy and paste the website address "www3.wipo.int/designdb/en/showData.jsp?ID=HAGUE.DXXXXXX", replacing XXXXXX with the six digit number of the Hague design registration number in question. On accessing that record, the “History” tab of the record should then provide a dated entry for each statement of grant notice which has been issued. Each of these notices, where issued, should also be separately communicated by WIPO to the owner (or listed representative, where present) of the Hague design registration in question.
In summary, the issuance of positive statement of grant notices provides welcome confirmation to Hague design registration holders that their registration is allowable in territories which issue these notices. For territories where these notices are not issued holders must instead bide their time, and wait until the relevant objection period (either six months or 12 months from the publication date of the Hague design registration) expires in the territory concerned.