Damascus, May 28 and 29, 2008 Päivi Lähdesmäki, WIPO

World Intellectual

Property Organization

The 1999 Geneva Act of the Hague System for the

International Registration of Industrial Designs

WIPO National Seminar on Industrial Property and on the Implementation of the TRIPS’

Obligations in the Pursuance of National Public Policies and Goals

Damascus, May 28 and 29, 2008Päivi Lähdesmäki, WIPO

Why Geneva (’99) Act?

• States• English/French• Refusal 6 months• Special requirements

not possible

• Deferment up to 12 months.

• 10 years minimum duration

• States + Organisations• English/French• 6 or 12 months option• e.g. – Identity of creator

- Brief description- Claim

• Deferment up to 30 months

• 15 years minimum

1960 1999

Preparing an International Preparing an International Application:Application:

1.1. EntitlementEntitlement to file an International to file an International ApplicationApplication

2.2. LanguagesLanguages

3.3. RepresentationRepresentation before the before the International BureauInternational Bureau

1. Entitlement to file 1. Entitlement to file

an International Applicationan International Application

Who May File an Application ?Who May File an Application ?

Article 3 of the 1999 Act:

Closed system:Closed system:

• nationalitynationality• domiciledomicile• real and effective industrial or commercial real and effective industrial or commercial establishmentestablishment• habitual residence habitual residence

Which Act Will Govern the Application ?Which Act Will Govern the Application ?

Article 31(1) of the 1960 Act and of the 1999 Act:

The latest Act shall apply:The latest Act shall apply:

as regards the mutual relations of States party to as regards the mutual relations of States party to the 1934 Act / the 1960 Act / the 1999 Actthe 1934 Act / the 1960 Act / the 1999 Act

1934 / 1960 / 1999

1999 Act

1960

1999

Several Contracting Parties may be designated. ASeveral Contracting Parties may be designated. An n international application may be governed by more international application may be governed by more than one Actthan one Act.

Designations of Contracting PartiesDesignations of Contracting Parties

1934 / 1960 /1999

1960 Act

1999 Act

1999

1999 Act

1934 / 1960 / 1999

The European Community is one Contracting Party, The European Community is one Contracting Party, which is independent of its member stateswhich is independent of its member states.

1999

1999 Act

Not possible

Designations of Contracting PartiesDesignations of Contracting Parties

As an EU member

1999 Act

1999 Act

1999

1999

All member states of the European Union may All member states of the European Union may enjoy the 1999 Actenjoy the 1999 Act.

1934 / 1960 / 1999

1999 Act1999

Designations of Contracting PartiesDesignations of Contracting Parties

As an EU member

1999 Act

1934 / 1999

1960

Cumulative status: again, the latest Act shall applyCumulative status: again, the latest Act shall apply.

1999

1999 Act

1934 / 1960

1999

1960 Act

Designations of Contracting PartiesDesignations of Contracting Parties

Several ApplicantsSeveral Applicants

Two or more applicants may jointly file an Two or more applicants may jointly file an application !application !

Provided that Provided that each of them has an each of them has an entitlement through a Contracting Party or entitlement through a Contracting Party or Parties Parties bound by the same Act or Actsbound by the same Act or Acts.

As an EU member

1999 Act

1999

1934 / 1960

Co-applicants A and BCo-applicants A and B

1999

1999 Act1960

1999

1960 Act

Several ApplicantsSeveral Applicants

BBAA

1934 / 1960 / 1999

2. Languages2. Languages

Languages (Rule 6)Languages (Rule 6)

English and FrenchEnglish and French

• FilingFiling

• CommunicationsCommunications

• Recording and PublicationRecording and Publication

Language of FilingLanguage of Filing

Rule 6(1) and Rule 14(2)(a): English or FrenchEnglish or French

Attention: if filed trough the Office, it may restrict the Attention: if filed trough the Office, it may restrict the choice of the language.choice of the language.

Art.4(1)(a) of the 1999 Act:

An international application may be filed through the Office of the State of Origin if that Office so permits.

Language of CommunicationLanguage of CommunicationRule 6(3):

• To the International Bureau (from an Office or applicant / holder): English or FrenchEnglish or French

• Principle: from the International Bureau (to an Office or applicant / holder): The language of applicationThe language of application

3. Representation3. Representation

before the International Bureaubefore the International Bureau

Representation (Rule 3)Representation (Rule 3)

• BeforeBefore the International Bureau. the International Bureau.

• Not compulsoryNot compulsory

• No provision regarding competence or No provision regarding competence or qualification qualification

• No provision regarding geographical locationNo provision regarding geographical location

Appointment of a RepresentativeAppointment of a Representative

Rule 3(1) and (2):

• Must be signedMust be signed by the applicant or holder

• Only one representative

How to Appoint?How to Appoint?

Rule 3(2):

• In an international applicationinternational application

• In a request for the recording of a changerequest for the recording of a change (change in the ownership, change in the name and/or address of the holder etc.)

• In a separate communicationseparate communication (form DM/7 may be used)

Cancellation of AppointmentCancellation of AppointmentRule 3(5):

• May be requested by the applicant or holder, or the representative

• Ex officio by the International Bureau on appointment of a new representative, or in the case of a change in ownership.

No fee payable on appointment, change or cancellation of representative.

How to Fill in the Application How to Fill in the Application Form DM/1 ?Form DM/1 ?

Some main featuresSome main features

Contents of the International Application:

• Compulsory requirements :• Identity of the applicant• Entitlement of the applicant (nationality, domicile,

establishment, habitual residence)• Reproductions of the industrial designs• Designation of the articles (Locarno classification

optional)• Designated Contracting Parties• Fees paid

Contents of the International Application (cont.):

• A single international application may comprise several different designs (“multiple deposit”), up to a maximum of 100.

• All the designs must belong to same class of Locarno classification- i.e., ‘monoclass’ application.

• Must contain, inter alia, a reproduction of the designs, along with the designation of the Contracting Parties where protection is sought

Reproductions (Administrative Instructions: Part 4)

1) Contents

2) Quality

3) Physical presentation

1) Contents• Deposited design or article alone

• dotted or broken lines

• Plain and neutral background

• 3 cm minimum (subject matter)

• Technical drawings not allowed

2) Quality

• Photographs / drawings

• Colour or Black & White

• Aim : publication

3) Physical presentation

• pasted or printed onto a sheet of white and opaque A4 paper

• numbering (1.1, 1.2, … ; 2.1, 2.2…)• maximum size is 16x16 cm• edges cut at right angle• «right-angled» free of any foreign element• 5mm margin around each reproduction• ascending numerical order• sheet used upright

1.2 1.1

1.3

1.4

1.5 1.6

A

A’

X

1.1 1.2 1.3 1.6

1.4

1.5

X

X

Correcting Irregularities

• Give us our references (number and initials)

• Mind a possible impact on the publication fees: savings or extra cost?

• Base yourself on what was accepted

• Do not file a new application (except if divisional)

• New reproductions should not be loose nor bent

• New reproductions are required, not new representations ...

X

“… new reproductions are required, not new representations”

• 21/11/03 • 15/12/03

Deferment of Publication

•1999 Act - up to 30 months (from the filing date or from the priority date)

Requesting Immediate Publication or Deferment

Costs of an application:

• Payable Fees

– Basic fee : 397 CHF + 19 CHF / additional design

– Standard designation fee : • level one: 42 CHF + 2 CHF / additional design• level two: 60 CHF + 20 CHF / additional design• level three: 90 CHF + 50 CHF / additional design or

– Individual fee : see schedule of fees

– Publication fee : 17 CHF + 150 CHF / additional page

Designation Fees (Individual)

Hague Membership . 1934 . 1960 . 1999

Tip : Use Fee Calculatorhttp://www.wipo.int/hague/en/

The Hague Website

• http://www.wipo.int/hague/en/

• Information about Members• Information Notices• Forms / e-filing/ Fee Calculator• Electronic Guide and Legal Texts• Databases• Possibility to subscribe to newsletter• (near future – Country Info. Sheets)

Thank You

Päivi LähdesmäkiSenior Legal Officer

International Registration Systems Legal Service

paivi.lahdesmaki@wipo.int

World Intellectual

Property Organization