On 4th-6th of December 12th session of the Working Group on the Legal Development of the Hague system for the International Registration of Industrial Designs (Hague Working Group) took place at the WIPO Headquarters.
The Agenda of Working Group meeting included considerations on the following items:
(document H/LD/WG/12/7 Rev);
At the beginning of the session, the new members to the Hague Agreement were welcomed, namely Brazil (entry into force on August 1, 2023) and Mauritius (entry into force on May 6, 2023).
Ms. Le Thi Tuyet Mai (Viet Nam), Madam Chair of Working Group
Since January 1, 2010, the Hague Agreement has been in force on the basis of two different acts, namely the Hague Act of the Hague Agreement (1960 Act) and the Geneva Act of the Hague Agreement (1999 Act).
Ukraine is the part of Hague Agreement under 1960 Act as well as under 1999 Act.
Following the accession of Morocco in 2022 and Suriname in 2020 to the 1999 Act, no member of the Hague Union has been left outside the scope of the 1999 Act. Following this, member states and the WIPO International Bureau began discussing ways to unify The Hague system based on the 1999 Act.
In its analysis, the International Bureau of WIPO found that after Morocco and Suriname joined the 1999 Act, registrations under the 1960 Act began to account for only 0.32% of all international registrations under the Hague system.
Based on the results of this session, the Working Group decided to submit a proposal to the Assembly of the Hague Union to suspend the 1960 Act with a proposed effective date of January 1, 2025.
The adoption of such a decision by the Hague Union Assembly, which is scheduled for July 2024, will contribute to legal certainty and allow for the unification of the Hague system. As a result, it should increase convenience and clarity for applicants. It is also worth noting that such a decision, if adopted, will not affect international registrations made under the 1960 Act.
These amendments address suggestions made by Member States during the 11th session of the Hague Working Group, and are intended to provide applicants with greater opportunities to extend the time limit for remedying non-compliance with the conditions set out in Rule 14(1) of the Common Regulations, as well as to increase the possibility of refunds for fees paid prior to international registration.
After considering this issue, the Working Group decided to recommend to the Assembly of the Hague Union to amend Rule 14 of the Common Regulations and the Schedule of Fees and Charges, with an effective date to be determined by the International Bureau of WIPO.
This issue has been considered by the Working Group since the 8th session (2019) as one of the main factors that negatively affects the financial stability of the Hague system.
The WIPO International Bureau has developed a proposal to increase the fee for each additional design included in an international application from 19 to 50 Swiss francs. This proposal was supposed to enter into force in January 2021, but due to the COVID-19 pandemic and its economic impact, there was a delay in the procedure, and the proposal submitted to The Hague Union Assembly only in July 2023, where it was approved.
In addition, the International Bureau received requests from Member States to study the issue of a possible increase in the amount of the renewal fee for each design variant (from 17 to 50 Swiss francs) and to prepare a more general review of the Hague System of Fees and Charges for discussion at future sessions.
The results of the study include conclusions on the objective circumstances for the fee increase, such as the impact of inflation, as the amount of the fee for the extension of an international registration term has not changed since 1996, and the structural deficit of the Hague system,
Nevertheless, the Working Group decided not to recommend to the Hague Assembly to adopt a decision on increasing the renewal fee due to the large number of reservations from Member States, and requested the WIPO International Bureau to prepare a broader review of the fees and charges of the Hague system, including an analysis of the impact of the fee increase, which is to take effect on January 1, 2024.
Following previous requests from member states, the WIPO International Bureau held consultations within user groups and representatives of the countries party to the Hague Agreement on the language regime of the Hague system. As a reminder, the current working languages are English, French and Spanish.
Some respondents advocated the introduction of their languages as languages of the Hague system. This is due to the difficulties of hiring an interpreter or representative, which entails additional costs. There were also completely opposite opinions, in particular, regarding the revision of the language policy and leaving English exclusively within the system.
The parties expressed the need for a balanced approach to adding new languages, as this would increase the burden on applicants, which could lead to additional increases in fees and charges and undermine the main advantage of the system – cost-effectiveness.
The study set out in document H/LD/WG/12/8 also notes the need for the Working Group to determine the criteria for selecting new languages. This statement was made by the representative of the Ukrainian delegation, the First Deputy Director of the “Ukrainian National Office for Intellectual Property and Innovations” (UANIPIO) Bohdan Paduchak:
«The research outcomes provide a good basis for further discussion, offering insights into various criteria for introducing new languages. Primarily, we draw attention to the request outlined in paragraph 16 of document H/LD/WG/12/8, emphasizing the interest of user groups in applying objective criteria, such as the number of filings (actual and potential), rather than introducing a language based solely on a request from a specific Contracting Party. And some stakeholders have expressed interest in introducing languages beyond the official UN languages».
The initiative to include new languages in The Hague system came from the delegations of russia and China, in particular, the proposal to prepare for the introduction of russian was argued mainly by the status of the official language of the United Nations.
Ukraine strongly supported the statement made by the Polish delegation on behalf of the Central European and Baltic States (CEBS) Regional Group, which noted the need for a balanced and gradual approach to the introduction of new languages, as well as the importance of discussing the objectives, financial and organizational aspects of such an initiative as a matter of priority.
Anna Barbarzak, representative of Poland, coordinator of the CEBS Regional Group
The Ukrainian delegation emphasized that it shared the reservations of user groups and Member States regarding the introduction of new languages into the Hague system. It was also noted that, unlike a similar issue within the Madrid Working Group, the WIPO International Bureau study did not provide assurances that the introduction of new languages would not lead to an increase in fees under the Hague system.
In addition, Ukrainian delegates expressed categorical objection to the introduction of the russian language: «Ukraine also finds insufficient justification for the introduction of the russian language in the Hague System. We believe that any introduction of language options should be carefully evaluated, taking into account the specific needs and challenges faced by users. Referring to document H/LD/WG/12/8, we do not see russian language among Designs Contained in Hague Applications at the first three quarters of 2023, and low rankings in most other objective criteria, the exclusive application of which is a key finding of this research». – stated Bohdan Paduchak.
As a result of intensive discussions that took almost two of the three days of the 12th session, as well as due to to the cooperation of the Ukrainian delegation with representatives of Poland (coordinator of the CEBS group) and representatives of the Netherlands (coordinator of Group B), together with like-minded countries, the Hague Working Group decided not to introduce russian and Chinese into the list of working languages of the Hague system, but to continue the discussion at the next sessions.
The next Session of the Hague Working Group is scheduled for October 2024.