On 13 March 2018, the UK Government ratified the Geneva Act (1999) of the Hague Agreement for the international registration of designs, which will come into effect on 13 June 2018.
The Hague system provides an international application and registration procedure for industrial designs. The system allows an applicant to obtain protection in multiple countries by filing a single application with the World Intellectual Property Organisation, in a single language, e.g. English. Filing an industrial design application under the Hague system has the potential to save both time and money by enabling applicants to avoid having to file separate applications in each country.
To file an international application under the Hague system, an applicant must either: (1) be a national of a contracting party, or a member state of an intergovernmental organisation which is a contracting party to the Agreement, (2) have domicile in the territory of a contracting party, or (3) have a real and effective industrial or commercial establishment in the territory of a contracting party.
UK businesses have been able to make use of the Hague system by virtue of the UK’s membership of the EU, because the EU is a contracting intergovernmental organisation. By ratifying the Hague Agreement, the UK Government ensures that UK businesses will continue to be able to make use of the Hague system even after the UK leaves the EU in 2019. In addition, this ensures other contracting parties to the Hague Agreement will continue to be able to use the system to obtain protection in the UK.
Although the Hague system provides a centralised application procedure, it is nevertheless necessary for applicants to ensure that their application meets the differing requirements in different contracting states as to substantive design law and how designs can be represented. In particular, the drawings included in an international design should meet the requirements of all of the states in which protection is desired. The UK and the EU have very similar formal requirements for design protection, which means a design registration meeting the formal requirements of the EUIPO will very likely also meet those of the UKIPO.
Over the last few years, the Hague Agreement has expanded to cover a number of major states including USA, Japan, and Russia. Other states such as China are also expected to join in the future. An up-to-date list of contracting states can be found here.
The continuing expansion is making the Hague system more attractive, and ratification by the UK Government demonstrates its commitment to IP post-Brexit. The lack of harmonisation of design law in the contracting states means that careful consideration of each international application is required to take full advantage of the benefits. Going forward, UK attorneys will be in a unique position to advise on obtaining design protection in the UK, the rest of Europe, and internationally.