International Intellectual Property Protection for Industrial Designs—Part II

In my last post I discussed he Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which was adopted at Geneva on July 2, 1999 under the auspices of the World Intellectual Property Organization (“WIPO”) to simplify the process of seeking protection for industrial designs in multiple countries.  In this post I summarize some of the major features of the Geneva Act and the regulations accompanying it.

The Geneva Act permits a design applicant from a Contracting Party to file for protection in any of the Contracting Parties, including the applicant’s own country, by filing a single standardized application in either English or French. Pursuant to Articles 3 and 4(1) of the Geneva Act, any person who is a national of or is domiciled in a Contracting Party may file an international design application at the applicant’s national office or directly with the International Bureau (“IB”) of the WIPO.  If the application is filed with a national office it must generally be transmitted to the IB within one month from the date on which the national office receives it; however, if a security clearance is required by law, then an extended period of time will be allowed for transmittal of the application provided that the Director General of WIPO (Director General) is notified.

Article 5(1) of the Geneva Act sets forth the mandatory requirements as to the contents of an international design application. Article 5(2) of the Geneva Act provides additional mandatory contents as to Contracting Parties that have an intellectual property office that is an Examining Office, such as the United States Patent and Trademark Office (“USPTO”).  In its presentation to the Congress recommending ratification to the Geneva Act, the Department of State recommended that the following declaration be included in the U.S. instrument of ratification:  “Pursuant to Article 5(2)(a) and Rule 11(3) of the Agreement, the United States declares that it is an Examining Office under the Agreement whose law requires that an application for the grant of protection to an industrial design contain: (i) indications concerning the identity of the creator of the industrial design that is the subject of the application; (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of the application; and (iii) a claim. The specific wording of the claim shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described.”

According to Article 10(1) and Rule 15 of the Geneva Act, the IB will register each design that is the subject of an international design application immediately upon receipt by the IB of the application. The general rule under Article 10(2) of the Geneva Act is that the date of the international registration will be the filing date of the application, provided it is complete and complies with the mandatory requirements of the Geneva Act.  The IB will normally publish the international registration within six months of the registration date, unless the applicant requests that the publication be made immediately after the registration.  See Article 10(3) and Rule 17 of the Geneva Act.  In addition, applicants may also request deferment of publication, which shall be granted for a period of less than 30 months from the filing date if such deferment is allowed by the laws of all the Contracting Parties designated in an application.  See Article 11 (1) and Rule 16(1) of the Geneva Act.

Once an international registration has been published by the IB, a copy of the publication will be sent by the IB to each of the countries designated by the applicant in the international design application and those countries will normally have six months within which to advise the IB that the registration does not meet its national requirements and thus will not be given effect in that country.  However, if the national laws of a country provide for examination of design applications for novelty or allow for oppositions, then the country will have one year from the date on which it is advised of the international registration within which to advise the IB that it will not give effect to an international registration.  See Article 12 of the Geneva Act.  Article 14(1) of the Geneva Act provides that the international registration has the same effect in a national office, such as the USPTO, as a regularly-filed application for the grant of protection of the design under national law and that the applicant has the same remedies as if the design had been the subject of a national application.  Article 15 of the Geneva Act provides that invalidation by the competent authorities in a designated Contracting Party may not be pronounced without the right holder having, in good time, the opportunity to defend his rights. Article 16 of the Geneva Act provides that the IB must record changes of ownership and other matters regarding international registrations and that any such change will have the same effect as if the recording had been made in the examining of the concerned Contracting Party.

Pursuant to Article 17 of the Geneva Act, an international registration shall be in effect for a term of five years from the date of international registration. Registrations may be renewed for at least two additional terms of five years in all countries and renewal for longer periods may be possible in respect of designated countries that provide for longer periods of protection under their national laws. Renewal may be effected for some or all of the countries originally designated and requires the payment of fees to the IB as specified in Rule 24 of the Geneva Act.  Invalidation proceedings may be brought against a registration on the ground that it does not qualify for protection against the national law of any of the countries designated in an international application and, if this is found by the examining office in such country to be the case, such office may hold that the registration ceases to have any legal effect in that country.

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