By Dhruv Mathur and Johny Solomon Raj
The Hague System for the International Registration of Industrial Designs offers a convenient and a feasible solution for conducting smooth business and Design protection, for registering up to 100 designs in 96 countries now, by filing a single international application.
The Hague system can be used by:
– Nationals of…
– Anyone with domicile or habitual residence in…
– Anyone with a real and effective industrial or commercial establishment in…
any of the Hague System’s 79 members (referred to as “contracting parties”)– including all countries in the European Union (EU) and the African Intellectual Property Organization (OAPI) – can use the Hague System.
A person can secure design protection within any Hague System contracting party. If the applicant wishes to protect a design in a jurisdiction that is not party to the Hague Agreement, then they will have to file a national (or regional) application.
The Hague System for the International Registration of Industrial Designs welcomes a new participant to its list of signatories. Brazil is the largest economy in Latin America and its accession strengthens the status of the Hague System as a truly global option for securing design protection.
The Government of Brazil deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement on February 13, 2023. Brazil is the 71st Contracting Party to the 1999 Act and the 79th member of the Hague Union.
Therefore, with effect from August 1, 2023:
– If a person is a designer or business owner in Brazil, then he/she will be able to seek the protection of his/her designs in any of the 96 countries covered by the Hague System, by filing just one international application.
– If a person is a non-resident, then he/she will be able to secure international design protection in Brazil through WIPO’s Hague System, facilitating the expansion of their business into Latin America.
The Hague System for the International Registration of Industrial Designs is helping the world to come closer with respect to business opportunities, design protection, and expansion of IP cooperation amongst different nations. Brazil joining the Hague System will not just enable the designers/business owners in Brazil to take their designs to other member countries, but also the local owners like SMEs and entrepreneurs to attain a simple design registration in all the contracting countries.
Other benefits of filing design under Hague system:
- Avoid complex and costly domestic formalities.
- Applicants need not worry about the national languages of different countries, currencies or procedures in individual countries or markets. The applicant has to only deal with one international application in one language, pay one set of fees in one currency and deal with just one IP office – WIPO.
- Applicants have an option to schedule publication of their international registration to fit their business strategy, requesting publication only when they are ready to unveil your design on the market.
- Centrally manage your international registration directly through WIPO. One request for change to registration data automatically applies to all designated contracting parties.
- The applicants have a provision to renew their international registration in as many or as few contracting parties, and for as many of the designs, as they wish, directly through WIPO.
- Added advantage of electronic communications – anytime, anywhere – sent to applicants or their appointed representative, keeping the applicants informed about the status of their international registration.
India’s Current Status with respect to the Hague System
As of now, India is not a part of the Hague System, but since it is a part of the Paris Convention for the Protection of Industrial Property, priority can be claimed from a convention application if the design application in India is filed within six months of the priority date of an application, filed in any country or group of countries or member of inter-governmental organizations to which the Paris Convention applies. The same is recognized in the Designs Act in India.
Since, India is a part of Paris Convention, therefore, Article 4 A (2) would be applicable:
Article 4 A (2): Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.
Further, Article 4 A (2) (d) speaks:
Since the domestic legislation of the country of the Union where the first application is made decides what a regular national filing is, it is conceivable that the said legislation attributes that quality also to a filing in another country or a filing according to an international treaty to which such country is a party. The latter situation would occur according to the Hague Agreement concerning the International Deposit of Industrial Designs of 1925, revised at London in 1934, because Article 4(4) of that Agreement states that the right of priority established by Article 4 of the Paris Convention will be guaranteed to every design which has been the subject of an international deposit. without requiring compliance with any of the formalities specified in the latter Article. This is, of course, binding on the member States of the Hague Agreement, but would it also oblige other countries, parties to the Paris Convention but not to the Hague Agreemento acknowledge a priority right based on such international deposit or filing? A provision establishing such obligation was introduced at the Revision Conference of London in 1934.
Therefore, priority may be claimed for the Indian national filings based on the international design application (under the Hague System), as well as from a Community design filing.