UK joins Hague system for international registered designs
The international system for applying for registered design protection is taking another step forwards in June 2018, when the United Kingdom (on a national basis) joins the Hague system.
The Hague system is an international arrangement administered by the World Intellectual Property Organisation (WIPO), which is an agency of the United Nations and is based in Switzerland. It enables an applicant to file an international design application centrally at WIPO with the potential for the application to spread out to become a bundle of separate registered designs in the countries that were “designated” when filing the international application.
Many people are familiar with the international patent system called the Patent Cooperation Treaty (PCT) which is also administered by WIPO and which has been a runaway success in terms of country coverage (152 countries) and in terms of the large number of PCT patent applications that are filed each year.
The international design system is less well-known and has been less popular with applicants. It has had a smaller country coverage (of 67 countries) and for many years the countries available to be designated have not been of overwhelming interest to applicants. In recent years, countries of greater commercial importance have signed up to the Hague system. For example, the US, Japan and the EU have joined. In particular, the ability to designate the EU has been an improvement, because it has enabled the international design application to give rise to a registered design covering all EU countries including the UK.
And the country coverage is about to improve a step further. The UK has announced on 13 March 2018 that it will (finally, after much delay) join the Hague system on 13 June 2018, and will become the 68th member of the system. Thus, an international design application filed on or after that date may include a designation of the United Kingdom on a national basis, so that the international application may give rise to a national UK registered design.
With the impending arrival of Brexit, when the UK will leave the EU, the fact that the UK is joining the Hague system will give applicants flexibility over the strategy to pursue when filing an international design application. Up until the date of Brexit (currently expected to be 29 March 2019), an applicant may obtain protection in the UK by designating the EU and/or by designating the UK on a national basis. After Brexit, the EU designation will only cover the remaining 27 EU countries (excluding the UK), and thus the international design application will need to designate the UK on a national basis to ensure that registered design protection is achieved covering the UK via the Hague system route. Of course, there is currently, and will be in the future (after Brexit), the option of filing a UK registered design application directly at the UK Intellectual Property Office (UKIPO) in order to obtain protection covering the United Kingdom. It is just that, if an applicant is trying to streamline the business of obtaining design protection in many countries by using the centralised procedure of the Hague system, the applicant will have to consider which boxes to tick when specifying which designations the international design application should cover.
The centralised nature of the Hague system applies only initially to an international design application, in the first few months after it is filed online and is being processed centrally by WIPO in Switzerland. The application is then passed over to the national and regional patent offices of the designations for which official fees were paid when the international design application was filed. The national and regional patent offices assess the design in the application against their respective national and regional requirements (eg, relating to the number and type of views to be used to depict a design, and the acceptability of the use of depiction techniques such as using dashed or broken lines in the views to disclaim features from the scope of the design protection), and it is at the stage of the national and regional assessments that a problem can arise with having used the Hague system route. The problem can be that the design as presented in the international design application when it was originally filed has to try to anticipate the need to comply with all of the differing national and regional requirements that will be required of it in due course. This can lead to a cautious approach having to be adopted, where the design has to be prepared to the strictest of the national and regional requirements that is it likely to encounter, and this can mean that the design misses out on being able to be depicted using the liberalised depiction requirements that some national and regional patent offices will accept.
For example, if an international design application is filed designating the EU, Japan and the US, it may run into problems with the strict requirements expected by the Japanese Patent Office (JPO) and the US Patent and Trademark Office (USPTO), if the design in the application has been prepared to the liberal depiction standards allowed in the EU (eg, with only a few views being used to depict the design, and with any sophisticated use of shading or blurring to disclaim design features). Conversely, if the design is prepared up and filed so as to meet the strict requirements expected by the JPO and the USPTO (eg, with a full suite of a perspective view and six orthogonal views being use to depict the product that is the subject of the design), then the opportunity has been lost in the EU to obtain the broader protection that could have been obtained in the EU if the design had been depicted in a liberalised, modern manner.
WIPO have themselves realised that this “trap” has arisen with international design applications in recent years, since Japan and the US joined the Hague system, and they have run training sessions for the purpose of educating applicants about how to try to optimise the depiction of a design in an international design application to best suit the different national and regional standards that it may be expected to have to meet when it gets to the stage of national/regional processing after the initial centralised procedure.
The design depiction requirements imposed by the UK fall into the liberalised category that is shared with the EU, and thus if an international design application designates the UK in addition to designating the EU it should not be any more complex to devise and file the design in the application compared with if the application were to designate only the EU.
Applicants in the UK have been able to file international design applications in recent years (since the EU signed up to the Hague system in 2008), but they have made only limited use of the system, and this is probably unlikely to change when (on 13 June 2018) the UK joins the Hague system in its own right, on a national basis.
It may be expected that applicants outside the UK (such as applicants in Japan and in the US) will find the Hague system to be incrementally more attractive after the UK joins, as such applicants will then have the option of ticking the designation of the UK, in addition to ticking the EU designation in the application. With Brexit on the horizon, some cautious JP and US applicants may start to do this now (pre-Brexit), as well as thinking that it would be a wise policy to adopt after Brexit has actually occurred.
There is however an anti-Hague system school of thought that, because of the need to prepare up the design on a “one size fits all” basis (with the design having to be prepared up to the “lowest common denominator” – in the form of the strictest national and regional requirements), an applicant with a commercially important design may be better off avoiding the Hague system altogether and should, instead, file directly the desired national and regional design applications with each optimised to suit the relevant national and regional requirements, even if this will incur greater cost.
It will be interesting to see how applicants tackle using the Hague system as slowly but surely more and more countries join.