The latest in the series of events on Mastering The Hague Agreement was held in London on 18 June, just a few days after the UK joined the Hague System
Introducing the seminar, John Coldham of Gowling WLG (a member of the MARQUES Designs Team) commented on the timing coinciding with the FIFA World Cup, and noted that 22 of the 30 nations competing in Russia are in the Hague System.
Gregoire Bisson, Director of The Hague Registry, Brands and Designs Sector, WIPO (pictured right), provided an update on the system in particular relating to the UK, while Victor Caddy of Wynne-Jones, Laine & James (member of the MARQUES Designs Team, pictured far right) offered some tips relating to the disclosure of an industrial design, in particular on which pictures should be used when filing internationally.
Much of the discussion focused on the use of the Hague System by UK designers, and what can be done to encourage more use. Gregoire explained that last year the UK ranked 11th with 186 applications and 522 designs. In the three days after the UK joined the System, there were nine applications.
Gregoire gave some advice to prospective users, including using the e-filing systems to ensure you don’t make any costly omissions, thinking about whether to use shaded lines or photographs, providing as many views as possible along with a legend and explain why you have included or excluded certain views. “What you need to care about is strategy: be savvy and put a bit of thought into your Hague application,” he said.
He added that there are certain pitfalls to be aware of in some countries, such as unity of design (in the US) and product indication (the JPO and KIPO both reject logos in class 32). “You need to help the examiner understand your article,” he advised.
Victor addressed issues including using descriptions and disclaimers and discussed filing designs for graphical user interfaces (GUIs) including by using digital animation files, where available. “How many designs do you need to file? Potentially more than you think,” he said. “You need to be alert, proactive and flexible with filing strategies.” For example, a “hybrid strategy” involving national, regional and Hague applications may provide the best protection.
The seminar concluded with about 30 minutes of discussion with the audience, which comprised about 30 design practitioners. There were lots of questions about using the Hague System in practice, including regarding classification, priority, timing and national procedures.
This post is taken from the latest issue of the HouseMARQUES newsletter - read the full issue here.