N. 37, January - March 2008 
IP & RTD: Articles 

The link between the international design system and the Community design system: A new option for protecting your designs at the European and international levels.
Dr. Alberto Casado
OHIM
 
Since 2003, companies have been able to protect their designs in the European Union using a single application that provides unitary and uniform protection throughout the entire European territory. Community design protection is directly enforceable in every Member State. The area of protection increases each time the EU enlarges. If the owner of a design wants to obtain a registered Community design (RCD) an application should be filed at the Office for Harmonization in the Internal Market (OHIM) in Alicante (Spain). With the RCD, it only takes a few weeks and the compliance with some simplified formalities (a single application, a single language of filing, a single administrative centre, a single file to be managed, a single payment, the option to file multiple applications and keep the design undisclosed for up to 30 months to keep competitors from learning about it) for the holder to obtain the exclusive right to use it and prevent any third party not having his consent from using it. The fees for registering and publishing one design are €350 for five years of protection. The system is “fee-decreasing” which means that in an application for multiple designs, the fees for the second to the 10th design will be 50% of the basic fee, and less than 25% of the basic fee for the 11th design onwards. An RCD has an initial life of five years from the filing date and can be renewed in blocks of five years up to a maximum of 25 years, whereas the UCD (unregistered Community design) grants a right of three years from the date of the first disclosure that must have taken place within the EU territory.

This is one direct route that can be used to protect a right in the EU. Starting in January 2008, another route to protect designs in Europe using a single application has been available. On 1st January 2008, the accession of the EC to the Hague Agreement allows the designation of the EC in an international registration under the Geneva Act. Therefore, any person having residence in the territory of a Contracting Party may file an application for an international registration designating the EC. And Community designers are now allowed to apply for international protection of their designs under the Geneva Act. If it is not refused, the international registration will have the same effect in the territory of the EC as a Community design.

From this point of view, the link between the RCD system and the international system offers additional options to companies that want to protect their designs not only at the European Union level but also in third countries. It will simplify procedures, could reduce the costs for international protection and make administration easier. Moreover, it should further stimulate trade and innovation and create new commercial opportunities.

The Hague Agreement is a system of international registration for industrial designs applicable among the Contracting Parties of the Agreement. It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The Hague Agreement system allows designers to obtain protection in the territories of the Contracting Parties by filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs), thus replacing a whole series of registrations with different national or regional Offices. At present (January 2008), 25 countries are Contracting Parties to the Geneva Act, including Singapore, Turkey and Switzerland. http://www.wipo.int/treaties/en/documents/pdf/hague.pdf

Applications for international registrations have to be filed directly with WIPO and are processed there. For international registrations, only English and French can be used for the proceedings. It is not possible to use the other official EC languages. Furthermore, and in contrast to the Madrid Protocol, there is no need to use a national or a Community design as a basis for an international registration. Only after WIPO has published the international registration does OHIM come into play when examining the grounds for refusal.

For an international application, a fee has to be paid for each Contracting Party designated in the international registration. The fee depends on the specific Contracting Party. In the case of the European Community, the fee is equivalent to EUR 62 per design. All fees have to be paid in Swiss Francs to WIPO. It should be stressed that following the international route may not necessarily be cheaper than following the direct community route applying for a Design in Alicante. The final cost will depend on the content of your application, such as the number of designs, views, pages etc. For an exact calculation of the costs, please consult WIPO’s fee calculator: http://www.wipo.int/feecalc_dm

Within six months of the publication of an international registration designating the EC, the OHIM performs an examination of the grounds for refusal, i.e. whether the subject of the international registration complies with the definition of a design according to Article 3 CDR and whether it complies with public policy or morality according to Article 9 CDR. If the OHIM finds a ground for refusal, it communicates a notification of refusal to the WIPO thereby preventing the international registration from being effective in the territory of the EC. The WIPO forwards the notification of refusal to the holder of the international application who may respond to it by submitting observations directly to the OHIM. If the OHIM finds that the observations of the holder overcome the grounds for refusal, it will withdraw the refusal and notify the WIPO accordingly. On the contrary, if nothing happens during these six months, the international registration designating the Community shall, from the date of its registration, have the same effect as an application for a registered Community design.