International registration of an Industrial Design
Another available system for the registration of an Industrial Design is through an international way. A simplified procedure is used before the central administrative body - the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. These procedures are stipulated in the Hague Agreement Concerning the International Registration of Industrial Designs. The system enables consumers to obtain protection over the design (external appearance) of their products (packaging, labels, etc.) in more than 80 member states of the Hague Agreement.
Advantages of the system for international registration of an Industrial Design
The International Industrial Design Registration system offers some advantages to the applicants: The applications at the International Bureau are submitted in only one of the working languages (French, English or Spanish); payment of a one overall fee (in CHF); obtaining one general registration document (certificate); all subsequent changes can be made within one procedure before the International Bureau of WIPO; the renewal of the registration for the Industrial Design for a new period is cheaper and easier to administer; if necessary, multiple applications for registration may be submitted, including up to 100 designs (of one class or one composition).
It is proven that the Hague System for the International Registration of Industrial Designs generates very good preconditions for more cost-effective and fast protection of the products on the foreign markets, compared to the national registration procedures, which are sometimes a longer process.With the initiation of the international procedure for registration of Industrial Designs, there is no need individual applications to be submitted to each of these countries of interest for the applicants. In this situation, it becomes unnecessary to observe the requirements of different national laws. Besides that and at the same time the costs for registering the Industrial Designs are reduced; the requirements for translations into the respective working language of the office in the specific country are eliminated; the cost of attorney's fees in each individual country is saved; the obligation to follow and comply with the various deadlines in particular national offices, as well as the related payments of multiple fees in different currencies.
International Registration of an Industrial Design - effects
The international protection of an already registered Industrial Design obtained in each of the designated countries is identical to that granted by the national registration of the local Patent Office in that Contracting State. This is only the case when none of the designated Contracting Parties has notified the WIPO International Bureau of the final refusal within the specified time limit (or if the provisional refusal has subsequently been overcome). The conclusion is that the international registration of an Industrial Design is equivalent to multitude of national registrations of the same design(s).
It is important to note that the national regulations subsequently govern the acceptance (or rejection) of the registration in each of these territories, despite the nature of the international application. Therefore, for a certain international application for registration of an Industrial Design may be successful in some countries, but may be rejected in others. The International Registration of Industrial Design may not have effect in the country of origin if the law of that country stipulates it.
Unlike the Madrid Agreement governing the international registration of trademarks, the applicants for an international registration of an Industrial Designs do not need beforehand to have a basic national registration (or application) as a condition for filing an international application for the same Industrial Design. This also applies to the Bulgarian applicants who do not need beforehand to have a national or European registration of an Industrial Design or have applied for the same design. The scope of the sought protection in principle is determined by the external appearance of the product(s) which is revealed in the filed images (one or several in number) of the design in the international application under the Hague Agreement.
The term of an internationally registered Industrial Design is 5 years, which starts from the priority date. At the request of the applicant, this period may be further extended for 3 periods of 5 years each by paying the relevant renewal fees to the International Bureau.
Persons entitled to apply for an international registration of an Industrial Design
According to the principles adopted by WIPO and laid down in the Hague System, applications for an international registration of Industrial Designs can be submitted only by applicants - individuals who are citizens or legal entities having a permanent seat (business) in one of the Member States of the Hague Agreement. In the case of international applications for Industrial Designs with several applicants, at least one of them must originate from a Member State of that agreement.
Procedure for an international registration of an Industrial Design
The procedure is relatively easy and if all the document requirements are met, it can take up to several months to obtain an international registration of the submitted designs. The application is subjected obligatory to formal expertise by the WIPO International Bureau. The Expertise for novelty and originality of the filed Industrial Design is not conducted. After the registration of the International Industrial Design follows a publication in the WIPO International Design Bulletin. Each national Patent Office of the designated countries, based on its local law, has the right to confirm or deny the effect of the International Design for the territory of the respective country. These actions are usually carried out within the prescribed time - between 6 and 12 months after the publication of the International Industrial Design.
For each submitted international application for Industrial Design three types of fees are paid - basic fee; publication fee; individual fee for each designated contracting party (or standard fee), all of which are combined into a single payment at the beginning of the procedure. The formation of the due fees for international registration of Industrial Design depends on several main factors. The current fee tariff can be accessed at any time on the WIPO website, and an online WIPO fee calculator can be used.