WIPO – The Hague Designs System – Upcoming Rule Changes
Following a recent announcement by WIPO, a number of welcome changes have been made to the Rules of Procedure relating to the Hague Design Registration System. These changes will come into effect on January 01, 2022.
Modification of the publication deadline for a standard Hague design registration
The first and most important change concerns a change in when a “standard” Hague-registered design application is published, that is, an application that is not subject to any immediate publication or deferred. Accordingly, for any standard application filed on or after January 1, 2022, the new rules will mean that such applications will now be published by WIPO shortly after twelve months (instead of six months) from the date on which the The application for a design registered in The Hague is first submitted.
For many, this change to the standard publication deadline for The Hague designs will be seen as particularly welcome news, noting that the publication of the Hague design just six months after filing was often seen as too short a deadline. This practically meant then, for those who wished to extend the deferment period, the need to submit the Hague design application through the deferred publication route in order to otherwise extend the deferred publication period. However, this has sometimes not been possible, as a number of territories in The Hague design registration system do not allow the use of the deferred publication channel, such as Mexico; Russia; and Ukraine. Thus, for a Hague design comprising one of these particular territories, the Hague design could practically only be deferred from publication for up to six months from filing – which was often considered like too short a deadline.
Introduction of an exemption from “force majeure” for acts performed late
Another welcome rule change is the introduction of a provision for excusing late submissions to certain WIPO deadlines, regarding a Hague design application, in the event of “force majeure” circumstances. Such circumstances, for example, could include those caused by the still ongoing COVID-19 pandemic.
Signatory modifications for change of ownership requests
Finally, the rule changes also allow new owners of a Hague design registration to register as such with WIPO. In this regard, it is currently necessary that the new owner of a design registration in The Hague, when submitting an application for registration with WIPO to be recorded as a new owner, additionally sign the application for registration by the former owner of the design registration in The Hague. , or be accompanied by a certificate from the competent authority of the contractor’s contracting party that the new owner appears as the successor in title of the holder. This therefore constitutes practically a significant burden for new holders in cases where the signature of the former holder cannot be obtained as part of the registration request.
From January 1, 2022, however, it will be possible for a new holder of a design registration in The Hague to register as such before WIPO. without the need for such a signature by the former holder as part of the registration request, provided that the registration request is nevertheless established by a deed of transfer or another document sufficient to justify the registration of the change . Thus, on January 1, 2022, the process of registering the change in ownership of a design registration in The Hague will be much more aligned with many other design registers around the world – where the assignment of a design registration design can theoretically be registered without an official signed assignment form. by the former owner of the design registration.