Developments at WIPO/Hague/Locarno

Ludmila Celisová Designs Service, OHIM

Giuseppe Quinterno Senior Partner and Member of the BoardJacobacci & Partners

Marcus HöppergerDirector of the Law & Legislative Advice DivisionBrands & Designs Sector, WIPO

Chair: Susie Arnesen Partner, Attorney-at-LawSandel, Løje & Partnere

Development in International Filings - Introduction

Filings international

Development and comparison:• EU filings (i.e. OHIM)• 75,000 designs yearly• Registered Community designs since May 2003 (450,000 registered designs in force)

• International filings (i.e. WIPO) • 12,000 designs yearly• International registrations under the Hague Agreement (109,000 registered designs in force)

• National filings (e.g. CZ IPO)• 1,200 filed designs yearly• National registrations since 1962 (12,000 registered designs in force)

- A starting point for individuals and SMEs for affordable costs (€ 30/15 per design)- A step before EU or international protection with the benefit of national priority- A complementary system of substantive examination to the community registration without examination

SCT – Design Law Treaty

Current implementation of proposed changes

72

88

7671

88

7579 83

79 7672

7668

5664

44

Change 1: Choice in

illustration

Change 2: Reduced

copies for filing

Change 3: Registering a

set of designs

Change 4: Easier to

gain filing date

Change 5: Register 6

months after disclosure

Change 6: Register 12

months after disclosure

Change 7: Secrecy for 6 months after

filing

Change 9: Simplifying

procedures for legal

documents

Percentage of countries in which change is already implemented

High income countries Middle and low income countries

Potential impact on national offices

-2.0 -1.0 0.0 1.0 2.0

Administration

Financial

Procedures

Usage of design rights

Errors

-2 = significantly worse-1 = mildly worse0 = no change1 = mild improvement2 = significangly better

Middle & low income

High-income

Potential impact on users (applicants’ view)

-2.0 -1.0 0.0 1.0 2.0

Cost of registering

Time to register

Ease of registering

Likelihood of registering

Commercialisation

Registering overseas

Profitability

Design activity

-2 = significantly worse-1 = mildly worse0 = no change1 = mild improvement2 = significangly better

Middle & low income

High Income

Relative importance of changes (all applicants)

HAGUE - Introduction

Hague Union

45 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960)________________________________________60 Contracting Parties

• In 2008 EU acceded to Geneva Act of Hague Agreement.• Designation of EU = protection as registered Community Designs.• The gate of access for legal and natural persons residing or operating

within EU into more than twenty countries and regional territories out of EU.

• 20 individual memberships of EU states. • However, national entities enjoy the advantages of the international

registration system even though an EU state is not a member of the Hague system.

• Most active applicants from Germany and France. • In 2011 almost 4,500 designs filed from EU.• In 2011 over 9,000 designs filed to claim protection in EU.

Potential Accessions to the Geneva Act• Korea• USA (the Bill has already been

signed, foreseen accession by end of 2013)

• China (possible accession by the end of 2013)

• Japan• Russian Federation• Morocco• ASEAN Countries (announced for

2015)• Trinidad and Tobago• Barbados• Brunei• Madagascar

New E-filing Platform

A new e-filing platform available before the end of this year which will include following evolutions and improvements:

• a WIPO User account

• facilitated downloading of reproductions

• automatic check and transformation of images

• integrated fee calculator

• payment of fees by credit card

Hague Portfolio Manager (HPM)

• The HPM will enable access to data uploaded to the user account, such as the bibliographic data of the holder and a portfolio of international applications and registrations, • It will allow as well for interaction between the holder and the International Bureau. • The HPM will also make it possible to manage portfolios by allowing for the submission to the International Bureau of requests for the recording of modifications through an electronic interface related to a user account.

Filing an RCD at OHIMvs.

Filing an International Application designating the EU via WIPO

Who can file?

OHIM: any natural or legal person.

WIPO: any natural or legal person having an entitlement (nationality of a EU Member State, or domicile, or commercial or industrial establishment, or habitual residence in a EU Member State).

Language

OHIM: any official language of the Community (need to indicate a second language chosen among the official languages of OHIM: Spanish, English, French, German and Italian).

WIPO: English, French, Spanish.

Deferment of publication

OHIM: up to 30 months from filing date (or priority date); deferment involves payment of an official fee.

WIPO: up to 30 months from the filing date (or priority date); no deferment fee applicable.

Number of designs/modelsin one application

OHIM: no limit.

WIPO: up to 100 designs.

Number of views for each design/model

OHIM: a maximum of seven views.

WIPO: no limits.

Costs

OHIM and WIPO have different schedules of Official Fees: convenience to file with one or the other depends on number of designs, number of views, deferment of publication, etc.

OHIM: see website for calculation of fees.

WIPO’s fee calculator (in Swiss Francs) at: http://www.wipo.int/hague/en/fees/calculator.jsp

Fee schedule – Basic FeeOHIM 1st design ...................... € 230 2nd – 10th design ........... € 115 each 11th design + ................. € 50 each

WIPO 1st design ..................... CHF 397 ( € 318) 2nd – 10th design ........... CHF 67 each ( € 54 each) 11th design + ................. CHF 67 each ( € 54 each)

Fee schedule – Publication FeeOHIM

1st design ................. .... € 120 2nd – 10th design ........... € 60 each 11th design + ................. € 30 each

WIPO each design ..................... CHF 17 ( € 14)

Fee schedule – Deferred PublicationOHIM

1st design ....................... € 40 2nd – 10th design ............ € 20 each 11th design + .................. € 10 each

WIPO no fee for deferred publication

E-Filing Interface

OHIM: Allows to save and restore the application form.

WIPO: application form must be completed on-line.

Register of International Registrations (IR)OHIM does not keep a Register of IRs, not even those designating the EU: the International Bureau of WIPO does!

(When searching the RCDs in the name of a given subject, besides searching in the OHIM Database, also search in the Hague Express Database of WIPO).

Locarno - Introduction

International Classification for Industrial Designs under Locarno Agreement “the Locarno Classification”

• Signed 8 October 1968 (amended 28 September 1979).• 32 Locarno classes and their 219 sub-classes (7,024 indications of products to navigate the users through the classification).

– Products are classified first according to their purpose and subsequently according to the object that they represent.

– The classification is equipped with short notes giving clue in which class/sub-class a product is classified. No definitions of the objects which the indications of products represent.

– Too vague to narrow searches sufficiently (noise), inconsistency in classes and subclasses, no synonyms or homonyms rules…

• 10th edition adopted by Locarno CE in October 2012 - entry into force on 1 January 2014.

• CE renewed expression of interest in index for visual design features.

• Locarno Pilot Group in charge of development of such a system.

• Continued testing of system so far developed + explore other systems.

• CEL/11/2

Retrieval of designs information:

• The goal is to find design rights in force but also prior art with a functional tool responding to the growth of databases of IPOs, OHIM, WIPO... • ...either by revision of the International Classification for Industrial Designs, or• by another way reflecting the nature of designs – the appearance features (indexing the designs with controlled vocabulary, automatic recognition of pictures).

(Pilot Working Group of Locarno Union, OHIM Cooperation Fund projects)

Pendant, key ring tag or licence plate?

Object v purpose v function

• A holder v advertising unit v a spare part of means of public transport:

Ideally

• Classification by object regardless its function:

Pilot Working Group of Locarno Union/OHIM Cooperation Fund:

- A third level of classification is considered as complementary to the class/sub-class structure of Locarno classification.- Two classifications in one:

• first and second level of Locarno classification = function;• a six digit code in third level = object or appearance of a

product or its part.- A single position for each product or a group of visually similar products regardless their function.- Cross-references excluding synonyms.- Cross-references excluding homonyms.- Pictorial and verbal definition of each product.- Classification of visual features of shapes, decorative elements, colours and material.

Search by combination of the terms:

06-01-02 chairs AND 00-01-17 wooden pattern

06-01-02 chairs AND 00-01-17 wooden pattern AND 06-06-01 armrests

06-01-02 chairs AND 00-01-17 wooden pattern AND 00-01-20 triangular in plan

06-01-02 chairs AND 07-01- cups

06-06-08 casters

06-01-02 chairs AND 06-06-08 casters

Two design projects within OHIM Cooperation Fund:

Search Image, a software tool to enable images to be searched for on relevant databases, either by code or by use of an image recognition ability; and

DesignView, the portal for registered design information from participating national offices, OHIM and WIPO.

• Should integrate Search Image

Questions