Explanatory Memorandum to COM(2005)687 - Approval of the accession of the EC to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, adopted in Geneva on 2 July 1999 - Main contents
Please note
This page contains a limited version of this dossier in the EU Monitor.
| dossier | COM(2005)687 - Approval of the accession of the EC to the Geneva Act of the Hague Agreement concerning the international registration of ... |
|---|---|
| source | COM(2005)687  |
| date | 22-12-2005 |
On 12 December 2001, the Council adopted Regulation (EC) No 6/2002 on Community Designs (hereinafter referred to as “the Community Designs Regulation”).[1]
The Community Designs Regulation establishes the Community design system, which provides for the acquisition of protection for designs with unitary effect for the whole territory of the European Community. According to the Regulation, a design may be protected either by an unregistered Community design, if the design is made available to the public in the manner provided for in the Regulation, or by a registered Community design, if registered under the procedure provided for in the Regulation.
The Community Designs Regulation entrusts the Office for the Harmonization in the Internal Market (Trade Marks and Designs), hereinafter referred to as “the Office”,[2] to handle the administration of the Community design. On 1 January 2003, the Office enabled applications for registered Community designs with the first date of filing being granted on 1 April 2003.
On 23 December 2003, the 1999 Act of the Hague Agreement concerning the international registration of industrial designs, adopted in Geneva on 2 July 1999 (hereinafter referred to as “the Geneva Act”) entered into force. The Geneva Act allows designers to obtain design protection in a number of countries through a single international registration. Thus, under the Geneva Act, a single international application filed with the International Bureau of the World Intellectual Property Organization (WIPO) replaces a whole series of applications which, otherwise, should have been effected with different national or regional Offices.
The objective of this proposal is to establish a link between the Community design system and the international registration system established under the Geneva Act. This link will enable designers to file a single international application at the International Bureau of WIPO designating, amongst other Contracting Parties, the European Community in order to obtain protection under the Community design system.
Contents
- 2. The Geneva Act
- 3. Legal basis
- 4. Procedure for the accession of the European Community to the Geneva Act
- 5. Declarations to be made in the framework of the accession of the Community to the Geneva Act
- 6. Commentary on the Articles
- Article 2
- Article 3
- 7. Supplementary measures to be taken in the context of the accession of the Community to the Geneva Act
- 8. Conclusions
The Hague System is based on the Hague Agreement Concerning the International Registration of Industrial Designs. This Agreement is constituted by three different Acts: the London Act of 1934, the Hague Act of 1960 and the Geneva Act of 1999. The three Acts are autonomous and coexist with respect to their substantive provisions. Contracting parties may decide to become party to only one, to two or to all three of the Acts. They automatically become member of the Hague Union which at present has 42 Contracting States, amongst which 12 EU Member States.[3]
The system of international registration of designs arose from a need for simplicity and economy. In effect, it enables design owners originating from a Contracting State to obtain protection of their designs with a minimum of formality and expense.
The international application can be filed in one language (English or French), upon payment of a single set of fees. The applicant has to designate the Contracting States in which protection is sought. An international application is normally sent directly to the International Bureau. Upon receipt, the International Bureau checks that the international application complies with the prescribed formal requirements and then publishes the application – or better, the registration - in the International Designs Bulletin (on WIPO´s internet website). Following publication, each national Office must identify the international registrations in which they have been designated, in order to proceed with the substantive examination, if any, provided for by its own legislation.
Any substantive aspect of the protection (including in particular the substantive examination carried out by each Office, the assessment of the conditions of protection and the scope of that protection) is thus entirely a matter of the legislation of each designated Contracting Party.
As a result of that examination, the Office may notify to the International Bureau a refusal of protection for its territory. However, an international registration may not be refused on grounds of non-compliance with formal requirements. Such requirements must be considered as already satisfied, following the examination carried out by the International Bureau.
Once the international registration has been accepted it produces the same effect in each of the countries designated as if the design had been deposited there directly. The international registration is therefore equivalent to a national right in terms of its scope of protection and enforcement. At the same time, the international registration facilitates the maintenance of protection: there is a single deposit to renew and one simple procedure for recording any changes (e.g. in ownership or address).
The adoption of the Geneva Act in 1999 had a twofold objective, namely:
- to make the Hague System more attractive for applicants and to extend the system to new members; to that end, the 1999 Act has introduced a number of features into the Hague system with a view to facilitating the accession to the Hague Union of countries which administer design examination systems (such as USA and Japan);
- to provide for the establishment of a link between the international registration system and regional systems by providing that intergovernmental organizations may become a party to the Act.
The second objective opens the door for the accession of the European Community to the Hague System. The territory of the EU would then be regarded as a single country for the purposes of the Geneva Act, with the Community design rules as the relevant domestic legislation. The OHIM would become the Office responsible for the substantive examination of international applications in which the Community has been designated.
The Community design system and the international registration system as established by the Hague Agreement can be considered as being complementary. The Community design system provides for a complete and unified regional designs registration system which covers the whole territory of the European Union. The Hague Agreement constitutes a treaty centralizing the procedures for obtaining protection of designs in the territory of the designated Contracting Parties.
The Geneva Act system became fully operational on 1 April 2004. On that date, both the Geneva Act and the modernised Common Regulations under the Hague Agreement, which simplify the entire proceedings, became effective.
A Community act to accede to the Geneva Act must be based on Article 308 EC, the provision of the Treaty on which the common rules, i.e. the Community Designs Regulation, are based. In addition, a reference should be made to Article 300 of the Treaty, which confers powers to the European Community to enter into agreements between the European Community and one or more States or international organisations.
A recent precedent on a similar intellectual property exercise is Council Decision 2003/793/EC of 27 October 2003 approving the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989.[4] This Decision is based on Article 308 EC, in conjunction with Article 300 i, second sentence, and Article 300 i, first subparagraph.
Under Article 27(1)(ii) of the Geneva Act, an intergovernmental organization may become party provided the following conditions are fulfilled:
- at least one of the Member States of the intergovernmental organization is a member of WIPO, and
- the organization maintains an Office through which protection of industrial designs may be obtained with effect in the territory in which the constituting treaty of the intergovernmental organization applies;
- the Office of such organization is not the subject of a notification under Article 19 of the Geneva Act.
The European Community fulfils those conditions. First, all Member States are member of WIPO. Second, OHIM is managing the administration of the Community design system set up under Regulation 6/2002. Third, OHIM is not subject of a notification under Article 19 of the Geneva Act.[5]
According to Article 27 i of the Geneva Act, the instrument of accession to the Act shall be deposited by any State or international organization if it has not signed this Act. The EC has not signed the Geneva Act and is therefore obliged to deposit the instrument of accession. Article 27(3)(a) declares that for the EC accession the effective date of the deposit of the instrument of accession shall be the date on which the instrument is deposited. According to Article 28(3)(b) the accession of the EC then becomes effective three months after the date on which its instrument of accession has been deposited.
The Geneva Act and the Common Regulations under the Geneva Act, the London Act and the Hague Act of the Hague Agreement provide for the possibility or obligation for Contracting States to make certain declarations concerning the operation of the international registration system. Declarations made in the instrument of accession become effective on the date on which the Contracting Party becomes bound by the Act.
The Commission proposes that declarations to the Director-General of WIPO be made on the following matters.
(i) Article 4(1)(a) of the Geneva Act states that the international application may be filed, at the option of the applicant, either directly with the International Bureau or through the Office of the applicant’s Contracting party. However, according to Article 4(1)(b) a Contracting Party may notify that international applications may not be filed through its Office.
The Hague system draws most of its advantages from its simplicity and the location of the receiving office seems to be of minor importance for the application of designs. The European Community should therefore exclude the filing of an application through the Office in order to avoid useless duplication of work. Direct filing at WIPO is also to be preferred in order to avoid confusion by applicants between applications for registering Community designs and applications for international registrations. Such confusion would be all the more problematic in case of payment of the basic fee for an international application, which has to be paid in any event directly to the International Bureau and which is payable at the time of filing. If applicants would erroneously pay the fee to OHIM, this Office would have to return the fee.
It is significant that at present WIPO does not receive applications filed through national offices even from those Contracting Parties who would permit such a procedure.[6]
(ii) The Geneva Act provides in Article 7 that the prescribed fees shall include a standard designation fee that has to be paid for each designated Contracting Party. In addition, any Contracting Party that is an intergovernmental organisation may declare that, for each application and for each renewal of an international registration in which it is designated, the standard designation fee is replaced by an individual designation fee, whose amount shall be indicated in the declaration and can be changed in further declarations. The fixed amount may not be higher than the equivalent of the amount which the Contracting Party would be entitled to receive for a national application and renewal, that amount being diminished by the savings resulting from the international procedure. The designation fee shall be transferred by the International Bureau to the respective Contracting Party.[7]
In terms of income, the choice between the standard designation fee and the individual designation fee will have budgetary consequences for the Office. The European Community should therefore take advantage of this option and determine its own individual designation fee.
Such determination will have to be made on the basis of a number of elements. Fees will have to be sufficient to cover the costs incurred by the procedures relating to designs the protection of which is requested in the EU. This means not only the costs relating to examination of such designs in OHIM but also other procedures like invalidities and appeals. Such determination has not yet been made as a prior financial analysis is required. To undertake such an analysis, the major conditions of the accession to the Hague Agreement will have to be examined in detail. The Commission also needs to have a better idea as to the possible number of invalidities and appeals international designations could generate and thus the level of work involved for the OHIM.
On the basis of these studies, the Commission will propose an amendment of the Fees Regulation which will contain the level and structure of the fees to be fixed for the designation of the European Community through the Geneva Act.
(iii) Article 17(3)(c) of the Geneva Act obliges each Contracting Party to notify the Director-General of the International Bureau of the maximum duration of protection provided by its law. Article 12 of the Community Design Regulation provides for the maximum duration of protection of 25 years. The European Community shall notify the Director-General accordingly.
Declarations are not relevant or should not be made on other issues as foreseen in the Geneva Act and the Common Rules. Several of these possible declarations are not relevant for the European Community because they concern specific features of national legislation unknown in or not applicable to the Community Design Regulation, or because they are only relevant for examining offices.[8] Possible declarations on the effect of change of ownership and on exchange of documents do require a further explanation.
- According to Article 16 i of the Geneva Act, any contracting party may, in a declaration, notify the Director-General of WIPO that a recording of change of ownership in the International Register shall not have the same effect as a recording in its own Register until it has received the statement or documents specified in that declaration. However, in order to keep the international system as simple and efficient as possible, the Community should not submit such a declaration. Thus the international register will have full and direct effect in the EU.
- Article 10(5)(a) of the Geneva Act specifies that the Office of each Contracting Party may notify the International Bureau that it wishes to receive a copy of each international registration in which it has been designated immediately after the registration has been effected, along with any relevant statement, document or specimen accompanying the international registration. The Community should not require such copies since the examination as to the grounds for refusal (public policy, morality and definition of the design) can be carried out on the basis of the publication of the international registrations by the International Bureau. Consequently, there is no need for OHIM to receive complete files from WIPO.
Article 1
In Article 1 the Council is invited to approve the Geneva Act. The text of the Geneva Act is attached to this decision in all the official languages of the European Community.
Article 2 i specifies that following the adoption of this proposal, the President of the Council shall deposit the instrument of accession with the Director-General of WIPO, in accordance with Article 27 of the Geneva Act. In order to avoid any complications on the implementation of the Geneva Act within the European Community, it has been clarified that the instrument of accession may be adopted as from the date on which the Council and the Commission have adopted the necessary implementing measures (Council Regulation amending Regulation (EC) No 6/2002 on Community Designs; Commission Regulation amending the implementing Regulation 2245/2002; Commission Regulation amending the Fees Regulation 2245/2002).
The second paragraph specifies the declarations that shall be made in the instrument of accession.
Following accession to the Geneva Act, the European Community will become a member of the Assembly of the Hague Union (Article 20 and 21 of the Geneva Act). This implies, for example, that the European Community may vote, in place of its Member States, with a number of votes equal to the number of its Member States which are party to this Act, and that the European Community shall.not participate in the vote if any one of its Member States exercises its rights to vote, and vice versa .
The tasks of the Assembly are, amongst others, to deal with all matters concerning the maintenance and development of the Union and the implementation of the Geneva Act; give directions concerning the preparations for conferences of revision and decide the convocation of any such conference; and amend the Common Regulations under the Geneva Act.
In accordance with Article 300 of the Treaty, the European Commission shall represent the European Community in the Assembly of the Hague Union. The European Community delegations may also include representatives of the Office.
In view of the above and in order to avoid unnecessary cumbersome procedures whenever future meetings of the Assembly of the Hague Union take place, Article 3 i of the proposal provides that the Council authorises the European Commission to represent the European Community at the future meetings of the Assembly of the Hague Union and to negotiate matters, on behalf of the Community, which fall under the competence which the Assembly has pursuant to Article 21 of the Geneva Act. Article 3 i specifies that the position of the European Community will be drawn up by the European Commission and the Member States within the competent Council working party or at on-the-spot meetings convened in the course of the work carried out within the framework of WIPO.
7. Supplementary measures to be taken in the context of the accession of the Community to the Geneva Act
The accession of the European Community to the Geneva Act requires several implementing measures at Community level.
First, the Community legislator has to provide rules which adapt the Community design system to the system of international applications under the Geneva Act. It is proposed that the measures giving effect to the accession of the European Community to the Geneva Act be incorporated in the Community Design Regulation by means of an amendment of existing provisions and addition of a new and separate title on “International Registration of Designs”.
Second, there is a need for modification of the implementing rules to give effect to the accession to the Geneva Act. This requires a modification of the Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing the Community Designs Regulation.[9]
Third, there is a need for modification of Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs.[10] The amended Fees Regulation should establish the individual fee system for international registrations, in line with the declaration made in this Decision.
Since the European Community would become bound by the Geneva Act three months after the date on which it has deposited its instrument of accession, the necessary implementing measures should enter into force before the expiry of the three months period.
On the basis of the above, the Council is invited to adopt the attached decision approving, on behalf of the European Community, the Geneva Act, authorising the President of the Council to deposit the instrument of accession to the Geneva Act with the Direct General of WIPO, and authorising the European Commission to represent the European Community at the meetings of the Assembly of the Hague Union to be held under the auspices of WIPO and to negotiate and approve matters, on behalf of the European Community, which fall under the competence of the Assembly.