International Design Registration (WIPO)
International Design Registration. This is an international registration system where design owners can file their application centrally at the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland, pursuant to the Hague Agreement, enabling a simultaneous protection of up to 100 designs that can be included in one single application and covering over 60 countries or regions, although subject to the conditions, requirements, term of validity and legislation foreseen in each Office. No basic design registration is required to use the system. The fees for each elected national or regional Office shall be paid at the time the international design application is filed. The International design will have the same effect as if design protection had been filed directly at the designated offices concerned.
Although the territories covered by this system might seem arbitrary, the use of this system of international design registration should be taken into account in many cases, due to cost savings on protection and particularly if any of the two Regional Offices EUIPO and OAPI are designated, rather than filing country-by-country, as well as for the simplified registration procedure, as it will be filed in one language, just the payment of a single set fees shall be done in one currency as well as concerning any further management of the international design, which will be centralized at the WIPO Office, such as any change in the register, consisting of one single file covering a bunch of national registrations with only one renewal deadline to watch for.
The Hague Agreement and Who May Apply? This system is limited to persons or entities having a real and effective industrial or commercial establishment, or an address, in at least one of the Contracting Countries. The Hague Agreement is constituted by three different Acts, which are to be considered for each country you choose, as some are party to only one act, some to two, and others to all three:
The Geneva Act (GA) of 1999;
The Hague Act (HA) of 1960;
The London Act (LA) of 1934;
Contracting States and Regional Offices of the Hague Agreement (Total: 66) -Status on December1, 2017-
|ContractingParty||Continent||Party to the Agreement (Acts)||MaximumDuration|
|EG Egypt||Africa||GA, LA||15 years|
|MA Morocco||Africa||HA, LA||15 years|
|NA Namibia||Africa||GA||15 years|
|OA (OAPI) African Intellectual Property Organization (16 member states)||Africa||GA||15 years|
|OA-BJ Benin||Africa||HA, LA||15 years|
|OA-BW Botswana||Africa||GA||15 years|
|OA-CI Côted’Ivoire||Africa||GA, HA, LA||15 years|
|OA-GA Gabon||Africa||HA||15 years|
|OA-GH Ghana||Africa||GA||15 years|
|OA-ML Mali||Africa||HA||15 years|
|OA-NE Niger||Africa||HA||15 years|
|OA-SN Senegal||Africa||HA, LA||15 years|
|RW Rwanda||Africa||GA||15 years|
|TN Tunisia||Africa||GA, LA||20 years|
|BZ Belize||America||HA||10 years|
|SR Suriname||America||HA, LA||—|
|ST Sao Tome and Principe||America||GA||15 years|
|US United States of America||America||GA||15 years|
|AM Armenia||Asia||GA||15 years|
|AZ Azerbaijan||Asia||GA||15 years|
|BN Brunei Darussalam||Asia||GA||15 years|
|KH Cambodia||Asia||GA||15 years|
|GE Georgia||Asia||GA, HA||15 years|
|JP Japan||Asia||GA||20 years|
|KG Kyrgyzstan||Asia||GA, HA||15 years|
|KP Democratic People’s Republic of Korea||Asia||HA||15 years|
|KR Republic of Korea||Asia||GA||20 years|
|MD Republic of Moldova||Asia||GA, HA||25 years|
|MN Mongolia||Asia||GA, HA||10 years|
|OM Oman||Asia||GA||15 years|
|SG Singapore||Asia||GA||15 years|
|SY Syrian Arab Republic||Asia||GA||15 years|
|TJ Tajikistan||Asia||GA||15 years|
|TR Turkey||Asia||GA||25 years|
|EU (EUIPO) European Union (28 member states)||EU||GA||25 years|
|EU-BE Belgium||EU||GA, HA||25 years|
|EU-BG Bulgaria||EU||GA, HA||25 years|
|EU-DE Germany||EU||GA, HA, LA||25 years|
|EU-DK Denmark||EU||GA||25 years|
|EU-EE Estonia||EU||GA||25 years|
|EU-ES Spain||EU||GA, LA||25 years|
|EU-FI Finland||EU||GA||25 years|
|EU-FR France||EU||GA, HA, LA||25 years|
|EU-GR Greece||EU||GA, HA||25 years|
|EU-HR Croatia||EU||GA, HA||25 years|
|EU-HU Hungary||EU||GA, HA||25 years|
|EU-IT Italy||EU||GA, HA,||25 years|
|EU-LT Lithuania||EU||GA||25 years|
|EU-LU Luxembourg||EU||GA, HA||25 years|
|EU-LV Latvia||EU||GA||25 years|
|EU-NL Netherlands||EU||GA, HA||25 years|
|EU-PL Poland||EU||GA||25 years|
|EU-RO Romania||EU||GA, HA||25 years|
|EU-SI Slovenia||EU||GA, HA||25 years|
|AL Albania||Europe||GA, HA||15 years|
|BA Bosnia and Herzegovina||Europe||GA||25 years|
|CH Switzerland||Europe||GA, HA||25 years|
|IS Iceland||Europe||GA||25 years|
|LI Liechtenstein||Europe||GA, HA, LA||25 years|
|MC Monaco||Europe||GA, HA, LA||50 years|
|ME Montenegro||Europe||GA, HA||15 years|
|MK Macedonia||Europe||GA, HA||25 years|
|NO Norway||Europe||GA||25 years|
|RS Serbia||Europe||GA, HA||25 years|
|UA Ukraine||Europe||GA, HA||15 years|
|VA Holy See||Europe||HA||—|
Main points of International Designs.
What Can Be Registered? The external visual appearance, ornamental or aesthetic aspect of any product or industrial or handicraft item can be protected, including packaging elements, graphic symbols and typefaces, these include any three-dimensional product or two-dimensional patterns, lines or combination of colours, as long as it is new and has individual character. Complex products or parts of products that can be taken apart and reassembled can also be protected as an International design.
The Spanish Office (OEPM). Spain has contracted most of the acts of the Hague System, thus design owners from any of the contracting Offices might designate Spain through this system. Besides, those Spanish applicants (nationals or residents) who base their Spanish design in the International registration may choose most of the countries or regions party to the System.
The European Union (EUIPO). The EU has only signed up to the Geneva Act so design applicants that who would like to designate the 28 EU Member States (RCD) can do so if the applicant’s country of origin has contracted this act. Besides, those owners basing their RCD for the International design registration may only elect the countries or regions that are party to the Geneva Act.
Multiple Design Applications. From one and up to 100 designs or variations can be included in one single International design application as long as all belong to the same Locarno class, while they do not need to be classified in the same subclass. There is no limit on the number of views per each design, although a fee has to be paid to WIPO for each view submitted.
Languages. English, French and Spanish are the working languages of the Hague System, being useful and attractive for both Spanish and Spanish-speaking companies and designers from other Member States seeking to protect their designs internationally.
Validity. International designs are granted for an initial period of five years but the maximum term may vary in each of the designated countries in the application (approx. 10 to 25 years, and up to 50 years in some cases).
Designer. In many countries you may indicate the name of the designer(s) or creator(s) in the design application, however it would not be mandatory to be mentioned and you may waive the right to be cited.
Disclaimers and Descriptions. In some countries it is mandatory that you enter a disclaimer/exclusion or a description of the design.
Classification of Designs. A design or multiple designs in one application must be correctly classified, also indicating the nature and purpose of the product according to the Locarno Classification.
Deferment of Publication. In some countries, the publication of a design may be deferred for a maximum period of 30 months from the filing or the priority date if it is requested by the applicant.
Courts for Design Infringement. All enforcement action and measures under civil law, in relation to International design infringement or unfair competition, must be brought at the relevant national court in which the design infringement occurred.
How Abecsa Can Help You. The value-added services we provide for International design registration can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to achieve the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP right in the future.
Free Search. We can conduct a free basic search by owner or designer in all Registers with effect in the European Union (EUIPO, WIPO, OEPM) to help you finding if your product is not registered by a certain owner or cited designer and it is likely available before we apply for the International design. If you wish, we could also carry out an accurate and comprehensive search (currently, no accurate search retrieving designs based on similarity can be done inexpensively) along with our written search report and a risk assessment, by using tools and databases that are not publicly available. This is a highly skilled work that should be conducted by a specialized IP professional.
Filing. We would file the International design application on your behalf, foreseeing the relevant aspects and the correct manner it should be applied for, depending on the kind of product to be registered, the number of viewsbest representing each design or variation (plain, in elevation, cross-sectional, in perspective, exploded), colours to be used if appropriate, etc. We have fixed fees for filings as well as for design prosecution in this international Office so you can foresee the estimated costs for your design protection for those countries and regions within the system.
Prosecution and Management. We will monitor the process until your design is registered and duly inform you of every official communication we receive from each Office, along with our local associates’ preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices, well before the given time limit, in order to avoid extra charges or any resulting loss of rights.
Defense. – Office Actions. If your design application is objected by a national or regional Office, based on the formalities check or substantive examination, or if it is challenged by a third party (opposition or declaration of invalidity), we can study the cited grounds for refusal or the relevance and differences of the earlier right on which the cancellation has been based and file the Office action response in defense of your rights within the given time limit, following the adequate strategy so we likely ensure success and uphold the desired registration of your design, and hence a solid enforceable registered design protection. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in design rights infringement proceedings with the Spanish and European Courts, directly, and everywhere else in the world via our local attorneys.
Other Actions. We can handle any associated matter on International designs such us the recordal of licenses, change of names and ownership transfers.
Representation. All persons or legal entities party to this Systemmay file directly an International design before the WIPO without the need of a representative. However, in the event that an Office action arises and a response or an appeal needs to be lodged against a refusal of protection, then the appointment of a representative might be mandatory and requested by the national or intergovernmental Office concerned. We would be glad to be your agent! You can enquire us about the representation of our attorney before the Spanish OEPM or at EUIPO along with our included associated services.
International Design Registration Procedure and Time Taken. The process would be divided in two stages; the first between WIPO and the second between the designated contracting Offices, ruling the International design application on the subject and conditions of each jurisdiction.
At the International Bureau. 1. Filing of the International Design. The application must be filed including the identification of the proprietor and of the designer, a representation or views for each design (with no limit on the number of views), the Locarno class along with a definition of the product covered by the design and the needed application fees for each design included. – 2. Formalities Check. Once the International design application is filed, the WIPO will examine its formalities to make sure the classification and indication of the product is correct, the representation of the views are clear enough and the fees cover all the designs applied for. The WIPOwill not check the novelty, thus it will not reject an international design application due to lack of novelty or any other substantive ground. – 3. Publication. If the application complies with the formal requirements, it will be published in the International Designs Bulletin.
At the National or Regional Office. 4. Substantive Examination: The national or regional Offices could reject a design on the grounds of lack of novelty or provide the deadlines so third parties can challenge your design registration. These designated Offices cannot object on formalities, as these were previously checked by WIPO. Provisional refusals on substantive grounds issued by the national examining Offices must be notified to WIPO within the deadline of six up to twelve monthsfrom the date of publicationin the International Designs Bulletin. – 5. Registration. Where no notification of refusal was issued within the applicable period, the national Office mustsend to the International Bureau a statement where the protection is granted or, in the event that no notification of refusal has been received by WIPO from the domestic Office within that period, the International design will be deem to be protected at that national or regional Office.
Information and Requirements to file an International Design Application:
- The full name and address of the applicant(s)-holder(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Name and nationality of the designer(s).
- List of countries or regions where you want to obtain design protection.
- Full details of the design and if appropriate, and a good representation of all the needed views of the design in JPG or similar.
- Short description of the product(s) or design(s) to be registered.
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
- Date of first disclosure of the product(s) or design(s) in a specific country of the European Union, if any.
- Your instructions on how we should proceed and approval of the likely costs.
- Your immediate payment by bank transfer from invoice issue.
- A POA signed by the applicant (no legalization) is required by the International Bureau.
Please do contact us via our contact form if you need advice or our fees on any design issues such as:
- Registering an International Design.
- Seeking our Attorney’s representation and appointment in your design registration.
- Opposing or declaring invalid an International design applied for by others.
- Defending your challenged or objected International Design Registration in an elected country, from an Office action, opposition, a declaration of invalidity or an appeal.
- Taking legal action against infringement of your registered or unregistered design right in Europe being used by another person or company.
- Renewing your International design for an additional five-year-period.
- Licensing the use of your designs or selling them ensuring the recordal of assignment of the designs to others.
Confidentiality. If this is the first filing of your design, it is convenient that you do not disclose the aesthetic characteristics to othersuntil you have applied for design protection, this may mean, in certain cases, that you might not be able to protect it, or your design may be declared invalid by anyone who proves this preceding disclosure (lack of novelty). However, you can safely discuss it with us, because as registered IP attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.