Modification to the publication term for a standard Hague design registration

The first, and most important, amendment concerns a change to when a ‘standard’ Hague registered design application is published, that is, an application which is not subjected to either immediate or deferred publication. Accordingly, for any such standard application filed on or after 01 January 2022, the new rules will mean that these applications will now be published by WIPO shortly after twelve months (as opposed to six months) from the date when the Hague registered design application is first submitted.

For many, this change to the standard publication term for Hague designs will be seen as particularly welcome news, noting publication of the Hague design after just six months from filing was often felt as being too short a time period. This then practically meant, for those wishing to extend the deferment term, a need instead to submit the Hague design application under the deferred publication route to otherwise extend the deferred publication period. This, however, was sometimes not possible noting a number of territories of the Hague design registration system do not allow for the use of the deferred publication route, such as Mexico; Russia; and the Ukraine. So for a Hague design including any of these particular territories, the Hague design could only practically be deferred from publication for up to six months from filing – which was often felt too short a time period.

Introduction of a ‘force majeure’ exemption for late completed acts

A further welcome rule change concerns the introduction of a provision for allowing late submissions to certain WIPO deadlines, relating to a Hague design application, to be excused in the case of ‘force majeure’ circumstances. Such circumstances, for example, might include those caused by the still ongoing COVID-19 pandemic.

Signatory modifications for change in ownership requests

Finally, the rule changes also facilitate new owners of a Hague design registration seeking to record themselves as such before WIPO. In this respect, it is currently necessary for the new owner of a Hague design registration, when making a recordal request to WIPO to have themselves recorded as the new owner, to have the recordal request additionally signed by the former owner of the Hague design registration, or be accompanied by an attestation from the competent authority of the holder’s contracting party that the new owner appears to be the successor in title of the holder. This thus practically poses a significant burden on new owners in instances where the signature of the former holder cannot be obtained as part of the recordal request.

From 01 January 2022 however, it will be possible for a new owner of a Hague design registration to have themselves recorded as such before WIPO without the need for such a signature from the former holder as part of the recordal request, so long as the recordal request is nonetheless evidenced by an assignment document or some other document which is sufficient to provide evidence for the recording of the change. Thus come 01 January 2022, the process for recording the change of ownership of a Hague design registration will be much more aligned with many other design registries around the world – where the assignment of a design registration can notionally be recorded without an official assignment form signed by the former owner of the design registration.

Conclusion

If you are interested in obtaining design right protection via the Hague system, or are curious to know how the Hague system might benefit you, please do not hesitate to contact one of the members of our design team who would be pleased to advise.