International Design Applications under Hague Agreement

• 1. Hague Agreement
• 2. Flow of International Application/Registration Procedure under Hague Agreement
• 3. Merits/Demerits
• 4. Finally

1. Hague Agreement

The Hague Agreement is an international application/registration system under which protection for industrial designs can be obtained in designated countries by mean of a single international application filed with the International Bureau of the World Intellectual Property Organization (WIPO), Therefore, the Hague Agreement allows integration of application procedures carried out in different countries.

As of July 2016, 62 countries including Japan, EU, South Korea, and the US and intergovernmental authorities have acceded to the Hague Agreement, while accession of China, Canada, Russia, and ASEAN countries (except for Singapore and Brunei, which have already conceded to the Agreement) are still under consideration. Japan's accession to the Hague Agreement was come into effect on May 13, 2015.

The number of international design applications has been increasing (12,454 applications in 2012, 13,172 applications in 2013, 14,441 applications in 2014, and 16,435 applications in 2015), and 411 applications were filed from Japan in 2015.

(From JPO: "Direction of Japan’s accession to the Geneva Act of the Hague Agreement (proposal)" (2012))

* "The Locarno Agreement" is an agreement defining establishment of International Classification for Industrial Designs, procedures for amendments and additions thereto, etc. In Japan, the Locarno Agreement came into effect on September 24, 2014. As of September 2014, 54 countries (including Japan) have acceded to the Locarno Agreement.

2. Flow of International Application/Registration Procedure under Hague Agreement

An applicant files, with the International Bureau of WIPO, a single application indicating an industrial design(s) for which protection is sought, countries where protection is sought, and so on (the application can be also filed with the JPO, with additional fees of 3,500 yen).

Differently from trademark applications under the Madrid Protocol, no prior application or registration in Japan is required. It is possible to designate Japan as a designated nation of an international application (self-designation).

The International Bureau of WIPO examines whether the application complies with the formal requirements. If no defect is found in the application, the international application is recorded in the International Register. This brings about effects identical to those brought about by directly filing formal applications with member countries. The filing date of the international application is the same as the registration date of the international application.

The contents of the international registration are published on the WIPO website six months after the date of the international registration.

Immediate publication or a deferment of publication after the international registration can be requested.

[Example Deferment Periods]
Maximum of 30 months： EU, France, Switzerland, Germany, Spain, South Korea, Turkey, Japan
Maximum of 12 months ：OAPI (African Intellectual Property Organization)
Maximum of 6 months：Denmark, Norway
Deferent is not allowed：The US, Poland, Singapore
（Note that the contents of the international registration are published at a time when, among deferment periods prescribed in designated countries, the shortest deferment period ends.)

A notification of a refusal is issued within 6 months or 12 months after the international publication.

[Example Notification Periods]
6 months：EU, France, Switzerland, Germany, Denmark, Norway, Poland, OAPI (African Intellectual Property Organization)
12 months：Spain, South Korea, Turkey, Japan and the US

The international registration is valid for five years from the date of the international registration, and can be extended by another five years by a renewal.

[Example Protection Periods (minimum of 15 years)]
Maximum of 25 years：EU, France, Switzerland, Germany, Spain, Norway, Poland, Turkey
Maximum of 20 years：South Korea, Japan
Maximum of 15 years：The US, Singapore, OAPI (African Intellectual Property Organization)

3. Merits/Demerits

Merits

• It is possible to file applications with a number of designated countries by filing a single international application. Furthermore, a single international application can include more than one design (Up to 100 designs as long as the designs belong to the same class of the International Classification of Industrial Designs). This allows an applicant to seek protection for designs with a simple procedure. In Japan, a single international application including more than one design is regarded as plural applications directed to respective designs, and a Japanese application number is given to each of the designs.
• Since an applicant can file a single international application with a single language selected from English, French, and Spanish, it is possible to reduce translational burdens.
• As with the Madrid Protocol, it is not necessary to file an international application via a local attorney. This allows a reduction in cost.
• An examination result is announced in 6 months from international publication in a county where no examination is required or, at the latest, in 12 months from international publication in a country where a substantive examination is required.
• Since a change in address etc. can be made through WIPO, it is possible to integrally manage an application.

Demerit

• In principle, contents of an international registration are published in the International Designs Bulletin six months after the date of the international registration (a deferment of publication is allowed depending on a country; in Japan, a deferment of publication by maximum of 30 months is allowed). Therefore, regardless of whether a design is registered, the contents of a design application, a notice of a refusal issued with regard to the design application, and the documents cited in the notice of a refusal come to be published (in principle, as to an application directly filed with Japan, only a registered design is published).
• Differently from an application directly filed with Japan, there is no secret design system (under which a design is not published for a maximum of three years from a registration).

4. Finally

As described above, international design applications under the Hague Agreement have merits such as a reduction in cost and a reduction in management, meanwhile have demerits such that a filed design is internationally published and comes to be publicly known before an examination on the design is conducted in designated countries. Therefore, it is necessary to file a design through an optimum method upon grasping such merits and demerits.

With the most appropriate method for protecting your design, we support you in acquiring international design rights through cooperation between our vastly-experienced Japanese attorneys and local representatives of various countries.

If you have any concerns about foreign application, Japanese application with a view to foreign application, or how to respond to a notice of a refusal, please feel free to contact us.