Enforcement of International Registrations under the Geneva Act of the Hague AgreementA Pan-European Perspective
AIPLA Annual Meeting 2012
Dr. Henning Hartwig, Attorney-at-Law, Munich
I. Introduction
II. Establishing Design Rights under the Geneva Act
III. Challenging Design Rights under the Geneva Act
IV. Enforcing Design Rights under the Geneva Act
V. Conclusion
Agenda
I. Introduction
4
I. Introduction
„The Hague System for the International Registration of Industrial
Designs provides a mechanism for registering a design in
countries and/or intergovernmental organizations member of the
Hague Agreement. It is administered by the International Bureau
of WIPO located in Geneva, Switzerland.
The System offers the owner of an industrial design a means of
obtaining protection in several countries by simply filing one
application with the International Bureau of WIPO, in one
language, with one set of fees in one currency (Swiss Francs).”
http://www.wipo.int/hague/en/
5
I. Introduction
The Hague Agreement is constituted by three different
Acts, namely:
(1) The London Act of June 2, 1934
(2) The Hague Act of November 28, 1960
(3) The Geneva Act of July 2, 1999
6
I. Introduction
Total number of Contracting Parties
II. Establishing Design Rights
under the Geneva Act
8
II. Establishing Design RightsA. Conditions
1. Who (authorized applicants)?
Article 3 Geneva Act
Any person that is a national of a State that is a Contracting
Party or of a State member of an intergovernmental
organization that is a Contracting Party, or that has a
domicile, a habitual residence or a real and effective
industrial or commercial establishment in the territory of a
Contracting Party, shall be entitled to file an international
application.
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II. Establishing Design RightsA. Conditions
2. Where (territories of protection)?
Country or intergovernmental organization being party
of the Hague Agreement (“Contracting Parties”)
On January 1, 2008, the EU also acceded to the Geneva
act
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II. Establishing Design RightsA. Conditions
3. What (contents of application)?
Language: English, French or Spanish
Reproduction: photographs or other graphic
representations
Multiple application: up to 100 designs of the same Locarno
class
Deferred publication: up to 12 months (Hague Act) or 30
months (Geneva Act) from filing or
priority date
No prior national application or registration required
11
II. Establishing Design RightsA. Conditions
4. How (registration procedure)?
12
II. Establishing Design RightsA. Conditions
4. How (registration procedure)?
13
II. Establishing Design RightsA. Conditions
4. How (registration procedure)?
14
II. Establishing Design RightsA. Conditions
Substantive Examination (if any) by the Office of designated
Contracting Party provided by national legislation
Refusal of protection
(refusal period may be replaced by a period of 12 moths by
Examining Offices)
Grant of Protection
(considered as granted if no notification of refusal has been sent within the refusal period)
Within six months
4. How (registration procedure)?
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II. Establishing Design RightsA. Conditions
4. How (registration procedure)?
Examination or non-examination of validity – different realities:
No examination ex officio Examination ex officio
European Union Germany Egypt
Benelux Greece Finland
Bulgaria Norway Georgia
Croatia Singapor Hungary
Denmark Switzerland Iceland
France Turkey Kyrgyz Republic
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II. Establishing Design RightsA. Conditions
5. How long (duration of protection)?
Initial period of protection: Five years
Renewal: One ore more additional
periods of five years
Maximum duration: corresponds to the
maximum duration
provided by the law
of the Contracting
Party
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II. Establishing Design RightsA. Conditions
Belize 15 Latvia 25
Benelux 25 Liechtenstein 25
Benin 15 Monaco 50
Bulgaria 25 Mongolia 10
Côte d’Ivoire 15 Morocco 50
Croatia 25 Namibia 15
Egypt 15 Niger 15
Estonia 25 Macedonia 25
France 25 Moldova 25
5. How long (duration of protection)?
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II. Establishing Design RightsA. Conditions
Gabon 15 Romania 25
Georgia 15 Senegal 15
Germany 25 Serbia/Montenegro 15
Greece 25 Singepore 15
Hungary 25 Slovenia 25
Iceland 25 Spain 25
Italy 25 Switzerland 25
North Korea 15 Turkey 25
Kyrgyzstan 15 Ukraine 15
5. How long (duration of protection)?
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II. Establishing Design RightsA. Conditions
6. How much (costs)?
Three different types of fees (in Swiss francs), namely:
• Basic fee
• Publication fee
• Standard fee or individual fee for each Contracting Party
Fee calculator on http://www.wipo.int/hague/en/fees/
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II. Establishing Design RightsB. Effects
Article 14 (1) Geneva Act
The international registration shall, from the date of
the international registration, have at least the same effect
in each designated Contracting Party as a regularly-filed
application for the grant of protection of the industrial
design under the law of that Contracting Party.
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II. Establishing Design RightsB. Effects
Office of each
Contracting Party
Formal requirements and procedures
Substantive requirements and procedures
Substantive requirements and procedures
III. Challenging Design Rights
under the Geneva Act
23
III. Challenging Design RightsA. Applicable Law
Law of each Contracting Party
Formal requirements Substantive requirementsSubstantive requirements
Substantive questions governed by the law of each designated
Contracting Party
Geneva Act
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III. Challenging Design RightsA. Applicable Law
Invalidity proceedingsInvalidity proceedings
Invalidity proceedings must be initiated with the competent
authorities of each Contracting Party
Competent authorityof each
Contracting Party
25
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
European Union
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III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Article 4 (1) Community Design Regulation („CDR“)
A design shall be protected by a Community design to the
extent that it is new and has individual character.
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III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Article 7 (1) CDR
(…) a design shall be deemed to have been made
available to the public if it has been published following
registration or otherwise, or exhibited, used in trade or
otherwise disclosed (…), except where these events
could not reasonably have become known in the normal
course of business to the circles specialized in the
sector concerned, operating within the Community.
28
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Step 1: Determining the prior art
Filing date: 01.04.2003
Disclosure: 1957
Disclosure: 1984
Disclosure: 1990
RCD 21-0001
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III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Article 5 CDR
A design shall be considered to be new if no identical
design has been made available to the public (…) before
the date of filing of the application for registration of the
design for which protection is claimed, or, if priority is
claimed, the date of priority.
Designs shall be deemed to be identical if their features
differ only in immaterial details.
30
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Step 2: Novelty
Identity?
Identity?
Identity?
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III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Article 6 (1) CDR
A design shall be considered to have individual
character if the overall impression it produces on the
informed user differs from the overall impression
produced on such a user by any design which has been
made available to the public (…) before the date of filing
the application for registration or, if a priority is claimed,
the date of priority.
32
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Step 3: Individual character
Same overall impression?
Same overall impression?
Same overall impression?
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III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Article 6 (2) CDR
In assessing individual character, the degree
of freedom of the designer in developing the
design shall be taken into consideration.
34
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
General Court of the European Union, decision of
September 9, 2011 – Kwang Yang Motor v Honda Giken:
35
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
Switzerland
36
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Article 2 (1) Swiss Designs Act
A design shall be protected to the extent that it is new
and has individual character.
37
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Requirements for protection
European Union Switzerland
A design shall be protected by a Community design to the extent that it is new and has individual character.
A design shall be protected to the extent that it is new and has individual character.
38
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Article 2 (2) Swiss Designs Act
A design is not new if an identical design has been
made available to the public prior to the filing date or
priority date in case that this design could have been
known to the relevant public operating within
Switzerland.
39
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Step 1: Determining the prior art
European Union Switzerland
(…) a design shall be deemed to have been made available to the public if it has been published (…), except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community.
A design is not new, if an identical design has been made available to the public prior to the filing date or priority date in case that this design could have been known to the relevant public operating within Switzerland.
40
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Step 2: Novelty
European Union Switzerland
A design shall be considered to be new if no identical design has been made available to the public (…).
Designs shall be deemed to be identical if their features differ only in immaterial details.
A design is not new, if an identical design has been made available to the public (…).
(-)
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III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Article 2 (3) Swiss Designs Act
A design does not have individual character if its
overall impression differs only in immaterial features
from a design, which could have been known to the
relevant public operating within Switzerland.
42
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Step 3: Individual character
43
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Different overall impression?
44
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Step 3: Individual character
European Union Switzerland
A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design (…).
A design does not have individual character if its overall impression differs only in immaterial features from a design (…).
45
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Step 3: Individual character
European Union Switzerland
Comparison test
•One-to-one
•Informed user
Comparison test
•Short-term memory
•Potential purchaser
46
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
Turkey
47
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Article 5 Turkish Designs Act
Protection shall be granted to a design which is new
and has individual character.
48
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Requirements for protection
European Union Turkey
A design shall be protected by a Community design to the extent that it is new and has individual character.
Protection shall be granted to a design which is new and has individual character.
49
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Article 6 Turkish Designs Act
A design shall be considered new if before the date of
reference no identical design has been made available
to the public in the world. Designs differing only in
immaterial details shall be deemed to be identical. To
make available to the public shall cover of all actions of
sale, use, publication, publicity, exhibiting, or such
similar activities.
50
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Step 1: Determining the prior art
European Union Turkey
(…) a design shall be deemed to have been made available to the public if it has been published (…), except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community.
To make available to the public shall cover of all actions of sale, use, publication, publicity, exhibiting, or such similar activities.
51
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Step 2: Novelty
European Union Turkey
A design shall be considered to be new if no identical design has been made available to the public (…).
Designs shall be deemed to be identical if their features differ only in immaterial details.
A design shall be considered new if (…) no identical design has been made available to the public in the world.
Designs differing only in immaterial details shall be deemed to be identical.
52
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Article 7 (1) and (3) Turkish Designs Act
A design shall be understood to have an individual character
if the overall impression it creates on the informed user is
significantly different from the overall impression created on
the same user by any design referred to in the second
paragraph of this Article.
In the assessment of the individual character, the emphasis
of evaluation shall be on the common features of the designs
and the degree of freedom of the designer in developing the
design shall also be taken into consideration.
53
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Step 3: Individual character
European Union Turkey
A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public (…).
A design shall be understood to have an individual character if the overall impression it creates on the informed user is significantly different from the overall impression created on the same user by any design (…).
54
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
Norway
55
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
4. Norway
Norwegian Designs Act implements EU Directive
98/71/EC (Directive on legal protection of Designs)
Requirements for protection correspond to CDR, i.e.,
Disclosure
Novelty
Individual Character
IV. Enforcing Design Rights
under the Geneva Act
57
IV. Enforcing Design RightsA. Applicable Law
Law of each Contracting Party
Formal requirements Substantive requirementsSubstantive requirements
Substantive questions, such as determining the scope of protection
of a design, are governed by the law of each Contracting Party
Geneva Act
58
IV. Enforcing Design RightsA. Applicable Law
procedural issuesprocedural issues
Procedural issues related to the enforcement of a design are ruled
by the national procedural law of each Contracting Party
procedural lawof each
Contracting Party
59
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
European Union
60
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
1. European Union
Article 10 CDR
The scope of the protection conferred by a Community
design shall include any design which does not produce on
the informed user a different overall impression.
In assessing the scope of protection, the degree of freedom
of the designer in developing his design shall be taken into
consideration.
61
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
Step 1: Determination of the (degree of) scope of
protection (Article 10 [2] CDR)
Step 2: Comparing asserted and accused design
in order to find or deny “same overall
impression” (Article 10 [1] CDR)
1. European Union
62
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
Switzerland
63
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Article 8 Swiss Designs Act
The scope of protection of a design shall include any
design providing the same characterizing features and,
therefore, producing the same overall impression.
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IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Infringement test
European Union Switzerland
The scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
The scope of protection of a design shall include any design providing the same characterizing features and, therefore, producing the same overall impression.
65
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Infringement test
European Union Switzerland
In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
( – )
66
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Comparing asserted and accused design
Different overall impression?
67
III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties
2. Switzerland
Comparing asserted and accused design
European Union Switzerland
Comparison test
•One-to-one
•Informed user
Comparison test
•Short-term memory
•Potential purchaser
68
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
Turkey
69
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
Article 11 Turkish Designs Act
In determining the scope of protection all designs which
produce on the informed user a significantly similar overall
impression (…) shall be taken into consideration.
In determining the scope of protection, common features
shall be given more weight than differences and the degree
of freedom of the designer in the development of the design
shall be taken into consideration.”
3. Turkey
70
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Infringement test
European Union Turkey
The scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
In determining the scope of protection all designs which produce on the informed user a significantly similar overall impression (…) shall be taken into consideration.
71
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
3. Turkey
Infringement test
European Union Turkey
In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
In determining the scope of protection, common features shall be given more weight than differences and the degree of freedom of the designer in the development of the design shall be taken into consideration.
72
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
Norway
73
IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties
4. Norway
Norway Design Act implements EU Directive 98/71/EC
(Directive on legal protection of Designs)
Requirements for infringement correspond to CDR, i.e.
Assessing the scope of protection of a design
Finding infringement of a design
74
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
International design DM/031388
(Claimed countries: inter alia Germany, France, Switzerland)
versus
Accused design
75
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
Switzerland Germany France
76
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
Swiss Supreme Court (decision of January 8, 2007)
According to the Designs Act it is not a synoptic one-
to-one comparison of two designs that is decisive but
rather the overall impression of the respective design that
the potential purchaser retains in his short-term memory.
(…) The criterion for assessing individual character of the
design-in-suit shall correlate with its scope of protection.
77
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
דshort-term memory test” is – at least – not allowed
under German design case law
×no direct link between validity and infringement under
German design case law
78
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
Karlsruhe Appeal Court (decision of November 25, 2009)
When comparing the complete existing design corpus as
asserted by the defendant with the overall impression of
the asserted design by way of an overall assessment,
there is no tendency to be found that the specific
appearance of the asserted design determining its overall
impression is also produced by any of the prior designs.
79
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
Paris Appeal Court (decision of September 12, 2007)
(…) the designs cited by the defendant [i.e., as prior art] do
not offer the same characteristics as the accused design
which has its own new physiognomy and which also
reveals, by the combination of its characteristics elements
as claimed, a creative effort bearing the imprint of its
author’s personality.
80
IV. Enforcing Design RightsC. Exemplary case law
The Jewelry Box case
×Neither German nor Swiss case law allows such a
comparison between accused (!) design and prior art in
order to find validity of the asserted (!) design
81
V. Conclusion
( + ) ( – )
Minimum of formalities
Languages (EN, FR or ES)
Multiple application (up to 100 different designs)
Only one set of reproductions required
Refusal or invalidity in one of the designated Contracting parties without any influence on the entire registration
All substantive questions are determined by the law of each Contracting party (no harmonization)
All proceedings as regards substantive questions take place at the responsible authority or court of each Contracting Party (no harmonization)
Thank you for your attention!