As you may be aware, Australia is not party to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement). This short article provides an overview of the Hague Agreement, advantages to be gained by such a system and Australia’s current position in relation to the Hague Agreement. The Hague Agreement sets out the Hague System. Two main Acts, namely the Hague Act (1960) and the Geneva Act (1999) are in operation.
What is the Hague System?
The Hague System for the International Registration of Industrial Designs provides a centralised filing system whereby one can apply for design protection in multiple countries through a single application made to the World Intellectual Property Organization (WIPO). This is analogous to the Madrid Protocol which allows filing and management of trade mark applications in various countries through a single application made through WIPO.
There are currently 77 contracting parties to the Hague Agreement covering 94 countries. China, the United States, the United Kingdom, and the European Union are contracting parties as well as other major trading countries that trade with Australia.
Advantages of the Hague System
- Centralising filing – If Australia becomes a party to the Hague Agreement, Australian applicants will be able to file an application designating a number of international trading partner countries. The Hague application can be based on an earlier Australian application (the priority application) and needs to be filed within 6 months of the filing date of the priority application. This will also likely be a more cost-effective process than engaging individual attorneys and filing individually in multiple countries.
- Simplified management of industrial design registration – Updating an owner’s address or paying renewal fees can be easily done through a single action. Hence, management of applications can be cost effectively done through the Hague system. The applicant may not need to engage individual agents to effect a change. This can be an expensive endeavour incurring multiple lots of official fees, service fees, and translations. The services of a local attorney will, however, still be required where an objection has been raised in an examination report.
- Defer publication – Under the recent Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021, publication of an Australian registered design can be deferred by 6 months. Under the Hague system, publication can be deferred for a maximum of 30 months from the filing date. It can be strategically advantageous to defer publication, e.g., it may allow applicants to align publication with a product release schedule.
- Term of protection – The current term of protection offered for an Australian design registration is 10 years with a single renewal required at the 5-year mark. Under the Geneva Act (1999), the term of registration is a total of 15 years, i.e., after an initial 5-year term, the term can be renewed for two 5-year periods. Under the Hague Agreement, Australia will need to increase its total term for design registration to 15 years.
- Partial designs and graphical user interfaces (GUIs) – The Hague system allows for protection of partial designs and GUIs. Under the current system in Australia, there is limited protection for non-physical designs. Also, a component of a design can be protected as long as it is a complete part on its own. There will need to be some reform of the current laws regarding partial designs and GUIs for Australia to join the Hague system.
In 2021, as part of the Australia-United Kingdom Free Trade Agreement, Australia agreed in principle to join the Hague Agreement. At this stage, Australia is not a contracting party.
Whether Australia will join the Hague Agreement will depend on whether changes can be made efficiently and cost-effectively to accommodate the Hague System.
Australia is, however, party to the Paris Convention for the Protection of Industrial Property (the Paris Convention) and it is worth noting that an Australian application for design registration can claim priority from a Hague application.
It is also worth noting that Australian applicants can file a Hague application if:
- They are a national of a contracting party or a member state of an intergovernmental organisation which is a contracting party, such as the European Union or the African Intellectual Property Organization.
- They have a residence in the territory of a contracting party.
- They have a real and effective industrial or commercial establishment in the territory of a contracting party.
If you have any questions regarding design registration in Australia or New Zealand, feel free to contact one of our attorneys.