The UK to join The Hague Agreement

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The Hague Agreement governs the international registration of industrial designs. It allows industrial designs to be protected in multiple countries or regions. An applicant may take advantage of the Agreement to file a single “international” design application with the International Bureau (IB) of the World Intellectual Property Office (WIPO).

For example, an applicant would file just one international design application (IDA), designating a selection of countries. The applicant pays the registration fee to WIPO specifically for those countries, and will include everything required by the Hague Agreement, as well as any additional requirements that are specific to the countries they have selected. Depending on the countries selected, there may be further processing, examination, or opposition periods for the designs. Renewal fees, however, are paid through WIPO (in most countries within 5 and 10 years).

This system allows for the filing of up to 100 different designs (provided they are all in the same Locarno class) in a single application. Rather than filing applications in every country individually, designers only need to deal with one application, one filing office, one language and, importantly, one set of filing fees – provided that all of the territories of commercial interest are members of the Agreement. The Agreement is somewhat limited in that not all countries have signed up (notable examples of countries which are not contracting parties include China, India and Brazil) and it was rarely used until Japan and the US joined in 2015. Even so, in many cases use of the Hague system can still save applicants a good deal of time, money and effort.

There are currently 67 members of the Hague Agreement, including many individual European countries. The European Union has been a contracting party of the Hague Agreement since 2008 in its own right and, by extension, all of the member states of the European Union have access to the system, including those who are not direct members of the Hague Agreement independently of their EU membership.

Until the end of January 2018, the UK’s status as a contracting party of the Hague Agreement was somewhat uncertain, thanks to the plans for the UK to leave the EU. On 23 January, the Designs (International Registration of Industrial Designs) Order 2018 was published, this being the final piece of legislation required for the UK to join the Hague Agreement independently of the European Union.

Next, the UK will need to deposit its instrument of ratification and then, three months later, the UK will be a member of the system. Originally the plan was to launch the service in early April. Meeting that deadline is a little unlikely but, assuming that the instrument of ratification is (or was) deposited on schedule, it won’t be too long before the UK is officially a member.

Those who wish to protect their designs will be pleased to learn that they will still be able to file either a UK national design application or an international application through WIPO, with no interruption to this service.

In more good news for designs applicants, Russia also joined the Hague agreement at the end of February 2018.

Useful resources:
For more information regarding designs see our Introduction to the Protection of Designs and International Design Registration under the Hague Agreement information sheets or contact us on 0131 243 0660 if you’re looking for specific advice.

Rebecca Douglas