By: Erika M. Alfonso
The Hague System is a product of two international treaties: The Hague Act of November 28, 1960 (1960 Act) and the Geneva Act of July 2, 1999 (1999 Act), also known as The Hague Agreement. It aims to provide a unified international registration system for industrial designs. As a result, the prosecution of industrial designs across multiple jurisdictions may be initiated by filing a single international application.
Currently, there are 66 Contracting Parties constituting The Hague Agreement. Although the Philippines is not a Contracting Party, Philippine nationals may still use the system if they have a real and effective industrial or commercial establishment in the territory of a Contracting Party.
The Hague System is said to be a “closed system” because only those who have connection with the contracting parties may use it. An applicant of an international design registration must have a connection, through an establishment, domicile, and nationality or (under the 1999 Act), habitual residence, with a Contracting Party.
The international application must be in English, French or Spanish. It must also contain a reproduction of the industrial designs sought to be protected and the list of the designated Contracting Parties. Unlike the Madid Protocol for trademarks, The Hague System does not require prior national or regional registration or application.
Applications may be filed directly with the International Bureau (IB) of the World Intellectual Property Office (WIPO) through the electronic filing interface (e-filing) available on the WIPO website, or through the use of WIPO’s official form. Applications may also be filed indirectly with the IB through the industrial property office of a Contracting Party. Upon filing and payment of required fees, the IB will conduct a formal examination. If all the formal requirements of application are satisfied, the application will be recorded in the International Register. The application will then be published in the International Designs Bulletin on the WIPO website.
After the IB’s formal examination, substantive examination by the designated Contracting Parties will follow. A Contracting Party may either grant or refuse protection based on the substantive conditions of protection provided by its domestic legislation. The Contracting Party must notify the IB of its decision within six (6) months or twelve (12) months - in case of oppositions - from publication of the international registration. If no statement of refusal is made within the prescribed period, the Contracting Party shall be deemed to have granted protection to the international application.
The grant of protection under the Hague System is five (5) years, renewable once for another five (5) years under the 1960 Act or twice for another five (5) years under the 1999 Act. If the laws of the Contracting Party granting protection provides for a longer term, the same term shall be granted to designs registered under the Hague System.
The Hague System attempts to standardize the procedural requirements of filing an international application for registration of an industrial design but exceptions still remain. Some Contracting Parties, e.g. Japan and U.S.A., still impose different procedural requirements.