Users of Registered Designs will be pleased to note that both the USA and Japan have recently signed up to become members of the Geneva Act of the Hague Agreement.
Under the Hague Agreement, it is possible to submit a single ‘International’ Registered Design application which covers some/all of the states (depending on which are selected by the applicant) that are members of the Agreement. To submit an application for an International design, the applicant must be either a resident or citizen of a state that is a member of the Agreement.
Currently residents or citizens from the UK are permitted to apply for an International design by virtue of the UK being part of the EU (which is a member of the Agreement). Following the implementation of the Intellectual Property Act last year, UK users will also be able to apply for a design under the Agreement once the UK itself becomes a member, which is expected to occur in the foreseeable future.
International design applications are submitted to, and centrally administered by, the World Intellectual Property Office (WIPO) in Geneva. Since each application is centrally administered, an International design application is often a cheaper, and more convenient, alternative to filing a series of separate applications in different jurisdictions.
The geographical coverage of an International design application is currently restricted to mostly European countries, and also parts of Africa. A list of the selectable countries can be found here. However from 13 May 2015, coverage will extend to both the USA and Japan. Applicants from either of these countries will also be allowed to submit applications under the Agreement from this date.
With South Korea having signed up to the Hague Agreement last year, and with Australia; Canada; and China being rumoured to be joining soon, the usefulness of design applications submitted under the Hague Agreement is set to significantly increase. Applicants considering Registered Design protection should therefore now consider whether design protection may be better achieved via an application filed under the Hague Agreement, rather than via a series of national applications.
If you are interested in submitting an International design application under the Hague Agreement, or would like any further information on such applications then please contact Sarah Merrifield, or your usual Boult Wade Tennant advisor.