Mandatory descriptions for visual disclaiming techniques

The first change to take effect from 01 January 2025 applies to any Hague design registration employing a visual disclaiming technique, such as the usage of either dashed lines or a semi-transparent coloured overlay, for disclaiming one or more parts of the design depicted in its drawings/reproductions.

Specifically, this change will require that wherever a visual disclaiming technique is used in the drawings/reproductions of a Hague design registration, this visual disclaiming technique must be explained in an accompanying description for the Hague design registration. Previously, the usage of a description was optional in these instances.

The usage of an accompanying description in this way is, to be fair, a matter of good practice, to reduce potential ambiguity in the scope of the resultant design registration, particularly where there otherwise might be some doubt as to the intent of the visual disclaimer which is being employed. That being said, this shift by WIPO towards mandating the usage of a description does seem at odds with design practice in many parts of Europe at least, where any provided description is not, strictly speaking, supposed to be determinative on the scope of protection.

It is worth noting that this change towards making it mandatory to describe any employed visual disclaimers in the description of a Hague design registration may result in additional official fees being payable, noting alongside the various other official fees payable for submitting such a registration, there is an additional official fee of 2 CHF for each description word in excess of 100. This excess-description fee can start to add up, so is worth being conscious of.

Freezing of the Hague Act (1960)

The Hague design registration regime is currently implemented by two separate pieces of legislation, namely the Geneva Act (1999) and the Hague Act (1960). These days, most contracting parties to the Hague design registration system are signed up to the Geneva Act (1999). Very few contracting parties are solely signed up to the Hague Act (1960) alone; these include, at the time of writing:

• Benin;
• Ivory Coast;
• Gabon;
• Mali;
• Niger; and
• Senegal.

It has therefore been decided that for any Hague design registration applied for on, or after, 01 January 2025, it will not be possible for this registration to make usage of the Hague Act (1960). In practice, this will therefore mean that any new Hague design registrations from this date will not be able to cover the above territories directly.

However, noting it is possible to designate the Organisation Africaine de la Propriete Intellectuelle (OAPI) under the Geneva Act (1999), note that all of the above territories are members of OAPI, so can still be covered indirectly through the usage of an OAPI designation under the Geneva Act (1999).

To be clear, any existing Hague design registration designating any of these African territories, before 01 January 2025 will continue to remain in force. Thus the new regime will only apply to Hague design registrations applied for on, or after, 01 January 2025.