The Hague Agreement
The Hague Agreement system standardizes and simplifies the international application and registration of a design by centralizing all administrative issues through the World Intellectual Property Organization in Geneva (WIPO).
Only one application to WIPO is required, designating the countries for which the applicant wishes to obtain a design. The application is filed in the country where the applicant has his place of business.
More than 60 member states, including the EU, Japan, South Korea, USA and Canada, have joined the "Hague Agreement Concerning the International Deposit of Industrial Designs", or Hague Agreement. However, it should be borne in mind that some important countries may also not be covered by Hague Design Agreements - for example, China. Design protection in China would require a parallel Chinese design application.
Applying for a design via the Hague Design Agreement ultimately leads to national design protection rights or designs in the individual countries. The design laws of the respective country apply. Therefore, different objections may also arise in the individual designated countries, for the elimination of which it may then also be necessary to call in national patent attorneys and attorneys-at-law.
Time savings and cost benefits
The ability to apply for a design centrally through WIPO can save time and money by eliminating the need to apply for the design individually with the relevant national offices.
The administration of design rights is also organised centrally at WIPO. Thus, for example, changes of ownership or renewals of property rights (possible after 5 years for a further 5 years in all designated states) also do not have to be notified separately to the individual national offices.
It should be noted, however, that a second extension of the protection right then depends on the national law of the respective states. In Germany, a design protection of up to 25 years can be applied for.
Design Application: WIPO versus OHIM
Central filing via WIPO is a good idea if international design protection is sought beyond the EU.
If the owner of a design seeks protection for the entire EU, a community design can also be applied at the Office for Harmonisation in the Internal Market (OHIM) in Alicante.
Costs for international registration of a design
The WIPO fee calculator provides an overview of the costs incurred for an international design application. This depends, among other things, on the country in which the applicant files the industrial product and for which countries of the Hague Agreement the design protection is to apply and how many individual designs are made in a design application. In principle, up to 100 different designs can be claimed in one application.
Depending on the number of designs in the design application, however, the costs vary greatly from country to country. While the costs for the designation of the European Union, for example, increase linearly with the number of designs in the application, in many countries there is also only one flat fee that is independent of the number of individual designs. For this reason, an adapted filing strategy enables significant cost savings here.
More information on design protection
Due to the large number of product imitations worldwide, protection via the external appearance of a product (e.g. lines, colours, contours and surfaces), i.e. design, is becoming increasingly important.
Design protection is very important for the economic success, competitiveness and originality of a company. Learn more about the legal basis and protection requirements in our blog article "Design application at the DPMA" (April 2018).
Regarding Justus Kreuels:
Justus Kreuels, German and European Patent Attorney since 2011/2012, studied mechanical engineering at the TU Munich and the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the enforcement of intellectual property rights in the field of mobile communication, Internet of Things (IoT), robotics, etc. in Germany.