International industrial design protection under the Hague Agreement?

International industrial design protection under the Hague Agreement is an effective way for businesses to protect intellectual property in the global market. This agreement provides a simple, cost- and time-saving international registration mechanism. This article will analyze important aspects of the Hague Agreement, from overview to conditions, procedures and business support services.

Overview of the Hague Agreement

The Hague Agreement on the International Registration of Industrial Designs is an international treaty administered by the World Intellectual Property Organization (WIPO). This agreement allows applicants to apply for industrial design protection in multiple member countries through a single application, filed with the International Bureau of WIPO.

The Hague Agreement brings many benefits to applicants, including:

• Simple procedure: Just submit a single application, in one language (English, French or Spanish) and pay a single fee.
• Cost savings: Reduced costs compared to filing applications in each country.
• Centralized management: Easily manage your portfolio of internationally registered designs.
• Market expansion: Easily expand protection to new countries.

Vietnam has officially joined the Geneva Document of the Hague Agreement from December 24, 2022. This opens up opportunities for Vietnamese businesses to protect industrial designs in many countries around the world in a convenient and effective way.

Conditions for industrial design protection according to the Hague Agreement

To be protected under the Hague Agreement, an industrial design must meet the following conditions:

• New: The design has not been publicly announced before the filing or priority date.
• Being creative: The design is different from previously known designs.
• Possible industrial application: Designs can be mass produced using industrial methods.

Additionally, the applicant must be a citizen of or have a business establishment in one of the member countries of the Hague Agreement.

Procedures for international industrial design protection according to the Hague Agreement

Procedures for international industrial design protection under the Hague Agreement include many steps, from form appraisal to content appraisal in each country. Mastering this process helps applicants be proactive, improve the likelihood of success and effectively protect industrial designs in the international market. Specifically, the protection process is as follows:

Prepare documents

The registration dossier for international industrial design protection under the Hague Agreement includes:

• International registration application according to WIPO’s prescribed form.
• Photos or technical drawings of the design.
• Design description (if necessary).
• Documents proving ownership of the design (if any).
• Power of attorney (if the applicant authorizes the representative).

Registration and protection procedures

Procedures for registering international industrial design protection under the Hague Agreement include the following steps:

Step 1: Submit an application for protection registration

Unlike the Madrid System, the Hague Agreement allows all Vietnamese organizations and individuals, foreign organizations and individuals permanently residing in Vietnam and foreign organizations and individuals with production and business establishments in Vietnam to apply for industrial design registration directly to the International Office or through the Vietnam Intellectual Property Office.

If submitting an international application directly to WIPO, the applicant can use one of three languages: English, French or Spanish. There are two ways to apply to the International Office.

Method 1: The applicant fills in the declaration according to the available form DM/1, submits a paper application including the declaration and a set of photos/drawings directly to the International Office or sends it by post.

Method 2: Apply through WIPO’s online system (Address of eHague system: https://www.wipo.int/hague/en/e-filing.html).

If applying indirectly through the Vietnam Intellectual Property Office, the applicant declares according to form DM/1. This form can be downloaded from the WIPO website or picked up at the IP Office. The language used in the application when submitted through the National Office of Intellectual Property is English. The National Office of Intellectual Property will send the registration dossier to the International Office.

Step 2: Appraise the form

The International Office of the World Intellectual Property Organization (WIPO) will conduct a formal examination of the application.

In case the application does not meet the formal requirements, WIPO will send a notice of deficiencies to the application owner and request the application owner to correct those deficiencies within 3 months from the date of notification.

If the applicant fails to correct the errors within the time limit specified above, the application will be considered abandoned and WIPO will refund the applicant the fees paid after deducting the basic fee.

Step 3: International registration

In case the application has no errors or has been corrected according to WIPO’s notice, WIPO will record the industrial design in the application and register it internationally in the form of International Registration and send the application owner a Certificate of International Registration.

From the date the International Registration is recorded, the International Registration takes effect in each designated country as a valid application under the law of that country.

Step 4: Announce international registration

After the industrial design in the international application is registered, WIPO will publish the International Registration in the Official Gazette of International Industrial Designs online at the address https://www.wipo.int/haguebulletin.

The date of publication of the International Register in the online Official Gazette is deemed to be the date on which information about the International Register is received by the designated States. The time limit for issuing a refusal notice for International Registration is calculated from the date of this announcement.

International registration will be published 6 months after the date of registration. However, the application owner can request early publication or request a delay in publication. If there is a request for early publication from the applicant, the International Registration will be published as soon as possible after the preparatory procedures are completed, which usually takes about 1 to 2 weeks. If the applicant requests to delay publication, the publication will be carried out immediately after the publication delay period ends or is deemed to have ended.

Step 5: Content appraisal

After the International Registration is published, the intellectual property office of each designated country will appraise the content according to that country’s laws.

If the conditions for protection are not met, the designated country may send a notice of refusal of protection to WIPO. This opt-out is effective only within that country and does not affect other countries. Denial of protection can be based on the appraisal results of the intellectual property agency or objections from third parties.

Reasons for refusal of protection may include:

• The set of industrial design photos and drawings do not fully represent the external appearance.
• Uniformity of industrial designs is not guaranteed (if the country has a declaration on this issue).
• Lack of mandatory projections according to some countries’ regulations.

When protection is refused, the holder of the International Registration can take corrective measures directly with the intellectual property office of that country without going through WIPO. Some countries require transactions to be conducted through an industrial property agent and in a specified language.

If protection is granted, the validity of the International Registration in that country will be equivalent to a national registration. The Designated State may also withdraw the refusal if there is an appropriate response from the holder of the International Registration. In some cases, if there is no notice of refusal within the prescribed period (6-12 months), the International Registration is automatically protected in that country.

International industrial design protection registration service at Long Phan Consulting Company

Long Phan Consulting Company provides professional and comprehensive international industrial design protection registration services under the Hague Agreement. Our services include:

• Consulting on protection conditions, registration procedures and related legal issues.
• Draft and complete registration documents.
• Submit your application and follow the processing process at WIPO.
• Track test results in designated member states.
• Support in resolving problems that arise during the registration and protection process.

With a team of experienced experts, Long Phan Consulting Company is committed to providing customers with high quality, effective and cost-effective services.

Frequently asked questions about international industrial design protection under the Hague Agreement

Below are answers to the most common questions about international industrial design protection under the Hague Agreement, helping you have a more comprehensive view:

How long is the international industrial design protection period under the Hague Agreement?

The protection period for international industrial designs under the Hague Agreement is usually 5 years, which can be extended many times, with a maximum total protection period of 25 years from the date of application.

What is the cost of registering for international industrial design protection under the Hague Agreement?

Registration costs include basic fees, publication fees and national designation fees. The specific fee depends on the number of designated countries and the number of designs in the application.

Can an application for international industrial design protection be submitted directly to WIPO or is it required to go through the Intellectual Property Office?

Applicants can submit directly to WIPO or through the Vietnam Intellectual Property Office.

What language is used in applications for international industrial design protection under the Hague Agreement?

Applications can be in English, French or Spanish.

If protection is denied in one country, will it affect other countries?

No, the refusal of protection in one country does not affect the validity of protection in other countries.

How can international industrial design protection be extended under the Hague Agreement?

The owner may extend protection by filing a renewal request and paying a renewal fee to WIPO.

How to check the status of an application for international industrial design protection under the Hague Agreement?

The status of your application can be checked on the WIPO website or through your industrial property representative.

Is it necessary to hire an industrial property representative to register for international industrial design protection under the Hague Agreement?

It’s not required, but hiring an experienced representative will help make the registration process go more smoothly.

Does the Hague Agreement apply to all countries in the world?

No, the Hague Agreement only applies to member states.

What types of industrial designs can be protected under the Hague Agreement?

The Hague Agreement protects industrial designs that are novel, innovative and capable of industrial application.

Conclude:

International industrial design protection under the Hague Agreement helps businesses protect their rights in many countries with just a single registration application, saving time and costs. This system facilitates market expansion, enhances brand value and prevents intellectual property rights infringement. For detailed support, please contact Long Phan Consulting Company via the hotline: 0906735386.