Australia and the United Kingdom recently agreed to the broad terms of a Free Trade Agreement, part of which seeks to enhance design rights. As a result, Australia has (finally!) agreed to join the Hague Agreement on Industrial Designs.
What is the Hague Agreement?
The Hague Agreement establishes an international system (the Hague System) administered by the World Intellectual Property Organization (WIPO) which allows designers to seek design protection in many countries at once, with fees paid in one currency, through a single international application. For those familiar with trade marks, the Hague System for Industrial Designs provides a similar procedure to the Madrid Protocol. That is, a single international application applied through WIPO enables applicants to secure rights in multiple participating countries.
How can designers benefit from the Hague System?
Centralised Management of Design Portfolios
Under the current system, Australians can apply for registered designs in Australia and overseas. However, for overseas protection, applicants need to engage in each country of interest a local agent and file a registration application through the relevant national IP administration office . Unsurprisingly, this can be an expensive endeavour, incurring costs for official fees, red tape costs at filing, translations (for non-English speaking countries) and substantive examination, all required for each country.
The Hague System enables designers to file a single design application through WIPO that can protect their designs in (currently) 92 countries simultaneously. Advantageously, this mitigates some of the costs associated with separate national filings by replacing multiple applications (and procedures and formalities) with a single application that only requires a single translation be provided with an application. This can be particularly advantageous for applicants filing designs into multiple non-English speaking countries.
There may be less of a need to involve local attorneys, but a local attorney may be required when an adverse official report issues in connection with a design in a specific country. One drawback in filing a single design application through the Hague System is that the design application may not meet the specific design registration requirements in a specific country. For example, China and the US have very particular design drawing requirements that could normally be addressed prior to filing after consultation with a local attorney.
A Single Application with Simultaneous International Design Rights
The Hague System allows designers to access some of Australia’s key international trading partners. For example, Australian designers planning to launch their designs into the global export market can utilise the Hague System to secure rights in the United States of America, United Kingdom and Canada. Additionally, designers looking to manufacture their products overseas can access design rights in Viet Nam, Japan and Korea. A full list of the contracting parties is available here.
An Option to Defer Publication
The Hague System allows applicants to defer publication of their international design applications. Advantageously, Australian designers can utilise this provision of the Hague System to keep their designs secret for up to 30-months after filing. On the international stage, this may stand as a strategic advantage for some Australian applicants. For example, registered designs can be selectively published according to e.g. a product release schedule or ‘roadmap’. In this way, an applicant can be agile with their product portfolio, publishing their registered designs when most suitable, or in alignment with a broader marketing strategy.
Term of Protection
In joining the Hague System, Australia will need to extend the term of protection from 10 years to a minimum of 15 years. Currently, in Australia, designs proceed directly to registration with only a formalities check. There is no need to undergo a substantive examination process unless the design owner wants to enforce the design. It is likely that the Australian Designs Act will be revised to not only cater for the longer term of protection, but also provide an opposition system given the increase term of protection.
Partial Designs and Graphical User Interfaces
Australian designers will also see the introduction of protection for partial designs and virtual designs in the coming years as the UK-Australia Free Trade Agreement takes shape. For those unfamiliar with partial designs and virtual designs:
a partial design registration will allow an applicant to protect a part, i.e. a ‘signature feature’ of their whole design (or product); and
a virtual design registration will allow an applicant to protect screen displays, graphical user interfaces (GUIs) and screen icons.
The Hague System includes protection for partial designs and virtual designs. IP Australia deferred introducing protection for these types of design registrations in the recent round of Design Law reforms which will come into effect in March 2022. Although not part of the current program of reforms, movement towards the Hague System will force the Australian Government to afford protection to these types of designs in order to align with other jurisdictions such as the European Union, United Kingdom and United States of America.
What can Australian Designers expect from the UK-Australia Free Trade Agreement?
As a part of the UK-Australia Free Trade Agreement, Australia has committed to make all reasonable efforts to join the UK as a member of the multilateral Hague Agreement on Industrial Designs.
While an ‘Agreement in Principle’ was announced on 15 June 2021, the Free Trade Agreement is not expected to come into effect until at least 2022, allowing for final negotiations to be made and the required legislation passed by both Australian and UK Parliaments.
In the years to come, leading to the finalisation of the Free Trade Agreement, designers can expect to see further changes to design rights in Australia. Royal assent to the current reforms to the design rights system was given on 21 September 2021 and thus will come into force on 21 March 2022 for the substantive law changes. While it is unclear how the Hague System reforms will materialise in Australia at this stage, some of the current reforms are consistent with the provisions of the Hague System. For example, the reforms introduce a 12-month grace period for design registrations in Australia which will come into effect March 2022.
The legislative and system changes associated with these reforms will benefit designers looking to maximise protection in international markets and lead Australia to the international partnership of the Hague System.