On 28 February it became possible to obtain registered design protection in Russia using the international filing system known as the Hague System.
The Hague System, administered by WIPO, can be used by applicants who have a link to a territory or international organisation that has signed up to that system. Protection can only be requested in other territories that are also parties to the system.
With Russia joining, the total number of parties is now 67, meaning the Hague System is often worth considering for those seeking to protect their designs across the globe. A full list of current members can be found here: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf
Other major jurisdictions including the US, Japan and South Korea have all joined this system in recent years. Much like the Madrid System for trade marks, the Hague System involves a central filing with WIPO. Formalities checks are carried out by WIPO following which the application is sent to the national offices of each designated territory. Each national office then effectively treats it like a national application.
Whilst it can often be more cost effective to use the Hague System rather than national filing systems, given the wide divergence in design laws in the member territories it’s important to be aware of the nuances of the national systems in territories of interest and to factor these into filing strategies before going ahead with a Hague filing. Key areas in which national systems can differ include duration of protection, image requirements, substantive examination and the ability to defer publication.
For those based in the UK, the Hague System can currently be used due to the fact the EU is a member of that system. The UK itself is currently in the process of joining the Hague System, and should be up and running in this regard later this year (and well before Brexit).
Patricia is a Senior Trade Mark Attorney in the Intellectual Property Department, based in our London office. She has extensive experience of all aspects of brand protection and portfolio management, helping clients devise and implement global clearance and protection strategies using national, regional and international trade mark and design systems. She has advised high-profile clients in a range of sectors including telecommunications, fashion, food and beverages, financial services and media.
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