The Registered Community Design

(RCD) registration system and links to

the Hague Agreement

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1. Definition of industrial design

2. Representation of the design

3. Indication of Product

4. Multiple Designs Application

5. Absolute grounds for refusal

6. The Hague Agreement

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1. Definition of industrial design

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Design: the appearance of the whole or a part of a product

resulting from the features of, in particular, the ...

lines colours shape texture

contours

materials

ornamentation

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Product:

any industrial or handicraft item, including

inter alia:

– Parts assembled into a complex product

– Packaging

– Get-up

– Graphic symbols

Excluded: “Computer programs”

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Complex Products:

Product composed of multiple components which can be

replaced permitting disassembly and re-assembly of the

product.

Parts intended for assembly into a complex product

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Foodstuffs

(class 1)

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Logos

32-00

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Transformable products

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Set of articles

Articles having aesthetic and functional complementarity

(common features, being on sale or intended to be used together)

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Plans, Blueprints

(printed matter)

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Not designs

• Natural products

• Words without any figurative element

• Ideas, methods, processes

• Functions (patents)

• Smells and fragrances

• Music and sounds

…do not constitute the appearance of a product and therefore do not

comply with the definition of a design.

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Natural products

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Logos/Graphic symbols

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2. Representation of a design

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• The representation can be photos, computer drawings or

drawings by hand, in colour or BW.

Paper application

• The design must be reproduced on opaque white paper

sheet A4 size, either pasted or printed directly on it

• The space used for the reproduction must be no larger

than 26.2cmx17cm with a margin of 2.5cm on the left-hand

side

Electronic application

• Image file format:

– JPEG format, limited to a maximum of 5Mb

– Only 1 image per electronic attachment

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1. Request for design registration

2. Information identifying the applicant

3. Representation of the design suitable for reproduction:

• Good quality – all details of the design for which

protection is sought should be visible

• Neutral background – the design should be clearly

identifiable in its environment

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What is neutral background?

The background in a view is considered neutral as long as the design shown in

this view is clearly distinguishable from its environment without interference of

any other object, accessory or decoration, whose inclusion in the

representation could cast doubt on the protection sought.

In other words, the requirement of a neutral background neither demands a

‘neutral’ colour nor an ‘empty’ background. It is instead decisive that the

design stands out so clearly from the background that it remains identifiable.

The examiner must be able to identify the design

for which protection is sought in each view without

knowing the indication of product or checking the

other views of the design.

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INDP: Drying Racks

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INDP: “Pavilions”

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INDP: “Vendors´ carts”

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How to remedy

INDP: “Chair”

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INDP: Housings for air filters, for engines

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INDP: “Housings for air filters, for engines”

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Representation of the design Other requirements

All views must show the same product

All views must show the same colour

Only 1 view per electronic attachment (e-filing technical restriction)

Views should not contain explanatory text, wording, numbers or symbols

Detail views of portions of the design should not be shown together with

the design in the same view

Set of articles & complex products must contain in the representation a

global view of the design

Typefaces must contain all the capital and small letters of the alphabet,

Arabic numerals and a text of 5 lines written in that typeface

Disclaimers are acceptable provided they are shown on the views

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Same product ?

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Separation lines

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Views in colour

Views of the same product showing different colours do

not relate to the same design.

“Design is the appearance of a product resulting from the

features of, among others, its colours …”

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Colour views CANNOT be combined with BW views

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Views in different grey shades are not acceptable as one

design

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Positive-Negative

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Only 1 view per electronic attachment

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Detail views of portions of the design cannot be included in the same view

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Set of articles

A set of articles is accepted as one design, provided the articles making

up the set are linked by aesthetic and functional complementarity and

are, in normal circumstances, sold altogether as one singe product.

It should be clear that the protection is sought for a design resulting from

the combination of the articles.

At least one view must show the set of articles together.

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Complex products

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Exploded views

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Disclaimers

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INDP: “Luggage carriers for cycles”

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“Colouring, Shading, Blurring”

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Do you consider the following representations acceptable?

INDP Lamps

INDP seat covers

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INDP kitchen furniture

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3. Indication of products

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• The application must contain an indication of

product

• The term must be clear and not too general, so

that its classification is possible

• The indication must correspond to the images.

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Suggested changes (examples)

Ornamentation

Where the design represents ornamentation for a given product, and that product as a whole is indicated in

the application, the examiner will suggest to replace that product indication by the indication ‘Product(s) X

(Ornamentation for -)’. The product would thus be classified under Class 32-00 of the Locarno Classification.

Graphic symbols/logos

Where the design represents a graphic symbol or logo but the indication of the products describes what this

logo/graphic symbol represents or to which kind of products it refers to, the examiner will suggest to indicate

the proper product indication, namely logo/graphic symbol.

Products and their parts

Where a design represents the appearance of a product as whole, and a part of that product is indicated in

the application the examiner will suggest either to delete that indication when the whole product is indicated

as well or that the product indication is replaced by the indication of the whole product.

Long lists of products

More than one product can be indicated in an application.

However, in order to ensure that the designs register remains searchable where the product indication

contains more than five products that do not belong to the same subclass of the Locarno Classification, the

examiner will suggest that the applicant limit the number of products to five and select products accordingly.

Where all of the same subclass (and all corresponding to the images) the examiner will ask the applicant to

replace them with some general term(s). Where applicable the heading of the relevant subclass, or part of it,

may be used.

Multiple applications List of indications corresponds to the total of the designs of the multiple but not to each of them.

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INDP: “parts & accessories for cars”

class 12-16

INDP: “parts & accessories for cars”

class 12-16

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07-99

INDP for all the designs: “Household appliances”

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Washing machines

Refrigerators

Dishwashers

Vacuum cleaners

class 15-05

“washing, cleaning and

drying machines”

Ovens (cooking)

07-02

Coffee machines

31-00

Juice extractors

07-04

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Where the indication of products is ‘Ornamentation’ and the design does not limit itself to representing this ornamentation but also discloses the product to which the ornamentation is applied, or part of it, without its contours being disclaimed, this product will be added to the indication of products and the classification will be amended accordingly.

Cups (ornamentation for-) 32-00

Cups 07-01

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4. Multiple application and unity of designs

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More than one design is allowed in an application, provided

the products are in the same Locarno class.

The indication ‘Ornamentation’ or ‘Product (Ornamentation

for)’ in class 32-00 of the Locarno Classification, in respect

of some designs, is neutral and thus ignored for the purpose

of examining whether the indication of products in respect of

the remaining designs meets the ‘unity of class’ requirement.

The same reasoning applies to the following indications of

products in class 32-00 of the Locarno Classification namely,

“Graphic symbols”, “Logos” and “Surface patterns”.

“Get-up” is excluded form the above rule.

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5. Absolute grounds for refusal

1) Public policy, public order and morality

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5. Absolute grounds for refusal

2) Statutory Prohibitions

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Case study

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INDP lace

6. The Hague Agreement

Components of the Hague Agreement

The Hague Agreement is an international treaty

administrated by WIPO that serves the purpose of

facilitating the filing of design applications at international

level. It was adopted in 1925 and entered into force in

June 1928.

It was later revised by 3 Acts:

– the 1934 Act (The London Act) in force 1939

– the 1960 Act (The Hague Act) in force 1987

– the 1999 Act (The Geneva Act) in force 2004

EU Accession: 01/01/2008

65 Hague Union Members

Geneva Act (1999): African IP Organization (AIPO), Albania, Armenia, Azerbaijan, Bosnia and

Herzegovina, Botswana, Brunei Darussalam, Bulgaria, Croatia, Denmark, Egypt, Estonia, European

Union, Finland, France, Georgia, Germany, Ghana, Hungary, Iceland, Japan, Kyrgyzstan, Latvia,

Liechtenstein, Lithuania, Monaco, Moldova, Mongolia, Montenegro, Namibia, Norway, Oman, Poland,

Korea, Romania, Rwanda, Sao Tome and Principe, Serbia, Singapore, Slovenia, Spain, Switzerland,

Syria, Tajikistan, F.Y.R. of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United States of

America (50)

Hague Act (1960): Belgium, Belize, Benin, Côte d’Ivoire, D.P.R. of Korea, Gabon, Greece, Italy,

Luxembourg, Mali, Morocco, Netherlands, Niger, Senegal, Suriname (15)

Who may use it

a. Be a national of a Contracting Party or a member State of an

intergovernmental organization which is a Contracting party,

such as the European Union or the African Intellectual

Property Organization,

b. Have a domicile in the territory of a Contracting Party,

c. Have a real and effective industrial or commercial

establishment in the territory of a Contracting Party

Special Features

• Protection of designs cannot be obtained in countries

which are not members of the Hague Agreement.

Notable exceptions: China, Russia, Brazil, India, most

Latin American Countries, Canada.

• Only members of the same Act can be designated. Self-

designation is possible.

• No prior national application or registration necessary.

A design can be protected for the first time at the

international level through the Hague Agreement system

(contrary to Madrid Protocol system for trade marks).

• Direct filings to WIPO by the applicant or his representative. The

application can also be filed electronically.

• The application can be filed in any of the 3 languages: FR, EN, ES

• Fees payable to WIPO (in Swiss francs). An international application is

subject to 3 types of fees:

basic fee

publication fee

individual fee for each designated Contracting Party

Fee calculator available in http://www.wipo.int/hague/en/fees

• Multiple applications: max 100 designs of the same Locarno Class

• Deferment of publication may be requested for a period that cannot

exceed 30 months (under 1999 Act) from the date of filing or the date of

priority.

Special Features

WIPO examines formal requirements such as those relating to the quality

of the representations of the design(s) and the payment of the required

fees. The applicant is informed of any deficiencies and is given a time limit

of 3 months to correct them. If he fails the application is considered

abandoned.

Where the application complies with the formal requirements the design is

recorded to the International Register and published in the Bulletin (unless

deferment of publication has been requested).

Substantive examination falls within the exclusive competence of the

Office of each designated Contracting Party (6 to 12 months for refusal).

Scope of protection, duration and renewal according to the domestic

legislation of Contracting Parties.

Invalidity only at the Contracting Party level.

• EUIPO: examination on grounds for non-registrability:

- no compliance with design definition

- against public policy and morality

6 months to communicate to WIPO the outcome of examination

• EUIPO charges 62€ per design

• No republishing in the Registered Community Designs Bulletin,

only providing a link to the Hague Express Bulletin

• 47% of International applications contain EU designation

EUIPO procedure

Additional information about the Hague System http://www.wipo.int/hague/en/

http://www.wipo.int/haguebulletin/?locale=en

Statistics (29/02/2016)

INDIA

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• EUIPO website:

https://euipo.europa.eu/ohimportal/en/

• Statistics:

statistical travel pack EUIPO

• Search sources:

https://euipo.europa.eu/eSearch/

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Design Protection in Europe

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The traditional route, i.e. applying for a Design in each

country

Using the Hague system to obtain designs in the

territory of the Member States

Applying for a European Union Registered Community

Design for the whole territory of the European Union

The Unregistered Community Design

National Protection for Designs

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File individual

applications

at each of the

National

Industrial

Property Offices

of the EU

International Protection for Designs

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A single fee is

paid to WIPO • An individual fee is

payable

to some National

Offices

• No single unitary

right is

granted - ‘bundle’

of rights’

• Each Trade Mark or

Design is subject

to the national laws

of each country

Protection for Designs in the European Union

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• Unitary character

• One Office for all

• One fee for all

• Use is not compulsory

in all Member states

• Fast-track options

available

• E-filing and e-payment

available

• Online search engines

to perform pre-checks

• Status of applications

available online

• Applications can be

filed in any of the 24

languages

Fees for Designs

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https://euipo.europa.eu/ohimp

ortal/en/rcd-fees-directly-

payable-to-euipo

Language regime at EUIPO

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EUIPO working

languages:

French

German

English

Spanish

Italian

Bulgarian

Czech

Danish

German

Estonian

Greek

English

Spanish

French

(Gaelic)

Croatian

Italian

Lithuanian

Latvian

Hungarian

Maltese

Dutch

Polish

Portuguese

Rumanian

Slovak

Slovenian

Finnish

Swedish

Official languages of the European Union

Expert´s name: Christophe Gimenez

former EUIPO IP Attaché in Beijing,

China

European Union Intellectual Property

Office (EUIPO)

Thank You

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