7 August 2012

Hague happenings

The Hague System for the International Registration of Industrial Designs does not compete with its trademark counterpart under the Madrid System.

There are some fairly obvious reasons for this:

1. In the "hierarchy of intellectual property" designs do not sit as high up as patents or trademarks.
2. The country scope of the Hague System is not as comprehensive as the Madrid System.
3. The confusion with - and to a certain extent non-compatibility - of the Hague and Geneva Acts of the Hague System.

The value of designs is expanding, as I have previously blogged, and the number of registered designs is increasing.

The country scope of the Hague System is far from comparable to the Madrid System for trade marks.

Europe is widely covered by Hague - the EU being a member making a notable contribution here. Africa is a patchwork of members and non-members (as it is also with respect to Madrid) with OAPI membership noteworthy. However, the membership barely touches Asia or the Americas let alone Australia at all.

Hague membership sits at 60 members. However, this is a bit misleading as 15 are a party to the Hague Act only and 45 are a party to the Geneva Act. For those of you with more exposure to trade marks, you can align this with the Madrid Agreement and the Madrid Protocol. Similar to how the Madrid Agreement is being phased out (with just Algeria being a member of the Madrid Agreement but not the Madrid Protocol), it seems the aim of WIPO to replace the Hague Act with the Geneva Act; a previous Act, the London Act is already "frozen".

It is complicated a bit further in that some of the members of the Hague Act only are member states of the European Union or of OAPI; with the EU and OAPI being members of the Geneva Act. Applicants from these countries can take advantage of both the Hague Act and the Geneva Act (using different entitlements).

Expansion of the Hague System is arguably less of a priority for IPR owners. Designs are often protected in a home jurisdiction only, as WIPO's statistics for 2010 seem to evidence. 77% of direct applications for Registered Community Designs were by EU applicants in a total of 76,865 filings. In the same period the EU was designated in an International Hague Application on only 3,512 occasions.

When the UK Government examined the EU's plan to accede to the Hague System it came out in support but against a simultaneous application to join it at a national level. It was asserted that the majority of IPR holders that sought design registration outside of the UK would need it in the EU anyway.

The figure for Hague designations of Switzerland is similar to that of the EU. Conversely, this figure is higher than the number of applications filed directly to the Swiss Federal Institute of Intellectual Property. This does suggest more regular use of the Hague System by Swiss applicants to protect in their home country and the EU.

New joiners tend to join the Geneva Act. Of the 15 Hague Act only countries, only four (Belize, North Korea, Morocco and Suriname) do not also have effective Geneva Act membership through being a part of the EU or OAPI.

Of these, Belize, as a Common Law country, should amend local legislation to reflect their membership but I cannot see anything in their Industrial Designs Act - Cap. 254 regarding this and would therefore have doubts concerning the enforceability of an International Registration in Belize.

North Korea faces stringent UN sanctions and most banks in the West will refuse to transfer funds there. Use of the Hague System circumnavigates this somewhat (as official fees are transmitted to WIPO) but potential applicants should be cautious and I would consider avoiding designating North Korea, even if it is possible to do so.

For Geneva Act qualifying only applicants, Suriname at the top of South America also cannot be included. The same applies for Morocco for the time being at least, but according to my sources at WIPO this country is moving towards Geneva Act accession.

The Republic of Korea - for the avoidance of doubt, that's South Korea - is expected to provide notable Asian presence with its expected accession to the Hague System. Over 57,000 design applications were filed in South Korea in 2010 which makes it a considerably large design filings country. Internal politics - an election is scheduled for later this year - have slowed the accession proceedings for the time being.

China and Japan have also been mooted as future members but this could be over enthusiasm from WIPO officials. During 2010, a humongous 421,273 design applications were filed in China (and it's not often I get to use the word 'humongous' in an IP blog!).

The United States have also been suggested as future members; I'm certainly aware that they have an upcoming election but more in the dark about any possible Hague membership application.

Of the current members, do be careful in designating Ghana for the same reason as Belize above. I cannot see amendments to Ghana's local law to allow for the enforceability of Hague International Designs. Incidentally, this is the same situation with respect to the Madrid Protocol and Ghana.

The situation in Namibia is ambiguous. Constitutionally Namibia should recognise the international treaties it has become a party to, but it has yet to implement specific legislation catering for Hague designs. With its history tied to neighbouring South Africa, it has a mixed Civil Law and Common Law system.

The other member countries are Civil law countries, which take into account international obligations. This includes Rwanda, which has a legal system derived from Belgian Civil law, although is now a part of the Commonwealth of Nations.

The Hague System languishes behind the Madrid System but it provides a very cost effective way to obtain design protection across Europe (beyond the EU). The addition of manufacturing powerhouses such as China and South Korea can only see its stature grow as a major commercial player could add momentum to a membership increase.

WIPO's own 2012 report on the Hague System, containing statistics and pretty graphs, was issued in May.