Hague will not not apply to Greenland, say Danes, but Faroes remain in the cold

Summerwear for Greenland, where
the July temperature averages 7 degrees

Across the civilised world, design experts are poring over Hague Notification No. 103, their hands trembling with unfeigned excitement as they scour its text in search of its deeper meaning. Yes, the story can now be told. The government of the Kingdom of Denmark, the land of the Bang & Olufsen, has made  a declaration before the World Intellectual Property Organization. Referring to its historical instrument of ratification of the Geneva Act -- the one which affirmed that the Hague's Geneva Act would not apply to the Faroe Islands or to Greenland -- the Danes have withdrawn the bit of the ratification that says it doesn't apply to Greenland. This declaration takes effect from 11 January 2011.

The reactions of the design communities of Greenland and the Faroe Islands are not yet known.

This author sincerely wishes that, in the 21st century, an era of brief, direct and meaningful communication, the formal, convoluted and pompous language of WIPO ratifications and declarations could be discarded entirely.  If not, perhaps it could be confined to the nether regions of OHIM's Boards of Appeal, from which in probability it will never be entirely eradicated.

Note: a corresponding declaration has been made in relation to the Madrid Protocol.

Norway to join Hague?

We hear that Norway may soon join the Geneva Act of the Hague Agreement. Norway's accession means that all the EEA countries (the EU, Iceland, Norway, Switzerland and Lichtenstein) are members of Hague - if and when it happens, it starts to add up to a sensible reason for using the Hague route to cover "greater Europe" and the European borders.

Germany joins Geneva Act

Germany has signed up to the Geneva Act of the Hague Agreement, which will take effect on February 13th. It is hard to see what benefits this will bring German applicants, as Germany has since 1928 been a member of all previous versions of Hague, and has (via OHIM) been effectively a party to the Hague Act since January 1st 2008. However, for members of Geneva Act-only countries, it will open the "national route" to cover in Germany if that is preferred to going through the OHIM route. One reason for going the national route might be to get improved protection for spare parts since Germany has not adopted a "repair clause" under its national design law equivalent to the EU Community Design provisions of CDR Art 110.

Hague Agreement: you win some, you lose some ...

From Hague Notification No. 97, released by WIPO today, Class 99 learns that

"The Director General of the World Intellectual Property Organization ... presents his compliments to the Minister for Foreign Affairs and has the honor to notify him of the deposit by the Government of the Federal Republic of Germany, on November 13, 2009, of its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 ...".

The Geneva Act will enter into force in respect of the Federal Republic of Germany, on February 13, 2010".

That's just one day before St Valentine's Day. Meanwhile, perhaps inspired by the magnificent gesture of its large and design-rich neighbour, the Swiss Confederation has decided to do some tidying-up. By Hague Notification No. 98, also released today,

"The Director General of the World Intellectual Property Organization ... presents his compliments to the Minister for Foreign Affairs and has the honor to refer to the deposit by the Government of the Swiss Confederation, on October 24, 1939 and November 7, 1962, of its instruments of ratification of the London Act of the Hague Agreement Concerning the International Deposit of Industrial Designs of November 6, 1925, as revised at London on June 2, 1934 (the "London Act"), and of the Additional Act of Monaco of November 18, 1961, to the said Agreement (Additional Act of Monaco), respectively.

The Director General of WIPO has the honor to notify that the Government of the Swiss Confederation deposited, on November 19, 2009, an instrument of denunciation of the London Act and of the Additional Act of Monaco. Pursuant to Article 22(4) of the London Act, the said denunciation shall take effect, in respect of the Swiss Confederation, on November 19, 2010".

The author of this post wonders whether he is alone in wishing that WIPO and all the other UN agencies would be able to cut out all the formalities and pomp and just give the facts.

WIPO Design stats

WIPO's statistical report "World Intellectual Property Indicators 2009" has just published on their website. A summary is here. It does cover up to the end of 2008, but not authoritatively: it notes that "the impact of the economic recession in 2008 is not fully reflected in this report, although signs of a slowdown in the use of IP rights can be seen already in 2007."
There is evidence of a significant rise in the rate of design filings over the past decade, with double-digit growth since 2005, reaching 15% in 2007, "thanks largely to increased activity in China".
Use of the Hague system itself is a more complex story. From a total of 4,000 filings a year in 2002, the numbers plummeted to 1,000 a year over 2005 to 2007. As half of those applications are "multiples" containing an average of 8 designs, you need to multiply those figures by 4.5 to get the total number of designs registered via Hague, but it is still pretty pathetic as against 40,000 Madrid trademark filings and 150,000 PCT patent filings a year.
You don't have to look far for the explanation of the 2003 filing collapse; that was the year OHIM opened its doors, so that the predominantly European Hague system had a serious competitor. However, a rise in Hague filings of 32% in 2008, despite the economic collapse, suggests that since the EU joined the Hague system at the beginning of 2008, Hague is clawing back business that would otherwise have gone to OHIM. Presumably, these two will at some point reach an equilibrium - until a serious country such as the US, Japan, Korea or China joins Hague and tips the balance further away from OHIM.
There is an interesting aside in the report on foreign design filings. It notes that: "In 2007, the share of total industrial design registrations by non-residents amounted to just 19.8%, which is below the equivalent shares for patents and trademarks. Industrial design protection is sought less frequently in foreign markets, because the products in question are geared mainly toward domestic commercialization."
I have no idea who came up with this rationalisation, but it has a bogus look to me. I think the reasons for low foreign filing rates are twofold: firstly, the Hague international design registration system (unlike Madrid and PCT) does not cover much of the industrialised world, and secondly, worldwide substantive law is far from harmonised which makes international design filing more complex and hence relatively expensive. Both of these failings are, to some extent, WIPO's responsibility, so I suppose it is not too surprising that the report does not mention them.

RIP London Act, Floreat Hague

Thanks to Class 99-er Graeme Dinwoodie for pointing out this breaking WIPO story.

Life for applicants using the needlessly complex International Design system is about to get a little easier, with the abolition of the 1934 London Act of the Hague Agreement, the first in the tale of five cities (it was followed by the Hague Act of 1960, the Monaco Act of 1961, the Stockholm Act of 1967 and, finally, something approaching modernity in the form of the Geneva Act of 1999).

Class 99 will miss the terse Gallicism of the 1934 Act (despite the name, the UK never acceeded and it was based on the old French system), featuring sealed or open "deposit" rather than filing, and the famous "enveloppe soleau", a double sealed, perforated envelope to be opened on need.

This is clearly the reason for the departure of Indonesia which we noted here on 1st May 2009 - it is the only Hague member which has only ratified the London Act, and so it will have no place in the post-London Hague system.

Even without the London Act, on filing an International Design it will continue to be important to check which potential designated States share the same version of the Agreement as the country of the filer. For example, Brits can only designate Geneva Act states, except in circumstances too complex for this posting. But every little simplification helps.

Indonesia leaves Hague system

Indonesia is leaving the Hague Agreement, effective in one year's time (3rd June 2010, to be precise), according to a WIPO Notice.
Indonesia has been a Hague member for over half a century, allowing people the satisfaction of ticking the box covering the world's fourth most populous country (and largest Muslim country). However, it is only since 2001 (impelled to it by TRIPS) that Indonesia has actually had a registered design law - so presumably, before that time, all those box ticks were just a waste of money (which perhaps could have been made clearer on WIPO's forms).
According to the excellent study by Suratno and Tanaka, when it did arrive the Indonesian design law was a pretty poor fit with Hague anyway, in fact making no mention of it. Swimming against the tide, Indonesia introduced novelty searching in 2004, which made the fit even worse as the 1934 text of Hague to which they had acceeded is a pure deposit system.
The 1999 Geneva Act would be a better fit since it permits countries to search and examine, and perhaps they have denounced the 1934 Act merely in order to accede to the 1999 one - but it is far from clear that this is so, as one would have expected the announcements to occur together.
Does anyone know more of the background?

Changes to the Hague Agreement

Here's a link to WIPO Information Notice No. 18/2008 on some amendments to the Hague International Design system. It does two things: one is to give a fee discount to the worthy poor in LDCs even when they apply through intergovernmental organisations (ARIPO would qualify I guess).
The second is to establish a system for centrally recording the successful entry into the "national phase" or "regional phase", by an Office that examines international applications for this and that. OHIM does so, at least notionally, but according to an article in Alicante News, "In the first nine months of its operation WIPO published 378 IRDs ... OHIM did not find a ground for refusal in any of the published IRDs and hence statements of acceptance were communicated to WIPO for all of them." The mysterious "statements of acceptance" OHIM have been sending will now be made public by WIPO, so you can check that an international design did become valid in the EU and anywhere else that adopts the same practice. WIPO is the only place you'll find this information, as OHIM decided not to record any information itself about international designs covering Europe (unlike its trade mark practice).

Exhibition Priority

Was ever a more dangerous, less useful concept enshrined in IP law than exhibition priority? As OHIM's Presidential Communication 1/03 says "only a very small number of exhibitions, in particular world exhibitions, fall under this provision" - it is more often claimed incorrectly than correctly. A rare patent case, T 0382/07, looked at an exhibition priority claim in a European patent, which had been filed as an international application, and concluded that the European Patent Convention did not allow exhibition priority, even though the Paris Convention and the WIPO Patent Cooperation Treaty permitted it, and the applicant's country of origin (where the PCT was filed) provided it. That analysis (applicable law is that of the designated state not the state of origin) would seem also to apply to Hague Agreement international designs. Had this been a design case, OHIM would have accepted the priority claim in respect of the European designation, but the many national offices which do not have exhibition priority would not. The applicant's own disclosure would still, I guess, be protected via a grace period where there is no exhibition priority, but intervening third party disclosures (as occurred in this patent case) would be lethal. The take-home message: don't rely on "exhibition priority" outside the shores of Europe.