Hague Agreement Update

As previously noted China (CN) became bound by the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) a year ago on 5th May 2022.

From that date China could be designated in applications filed using the Hague system and people who are Chinese nationals or domiciled in China or having a habitual residence or legal entities that have a real and effective industrial or commercial establishment in China could file applications using the Hague system.

In the past year about 1,100 international applications have been filed by applicants in China and over 900 international applications by applicants outside of China have designated China. Designation of China does not also designate Hong Kong or Macao, as design protection needs to be applied for directly for those special administrative regions. Another significant addition to the Hague Agreement will occur on 1st August 2023 when Brazil becomes bound to the Geneva Act.

A person or legal entity in a country that is not a contracting party to the Hague Agreement can still use the Hague system if they are:

• a national of a contracting state; or
• domiciled in a contracting state; or
• have a habitual residence in a contracting state to the Geneva Act of the Hague Agreement; or
• have a real and effective industrial or commercial establishment in a contracting state.

Prior to China becoming bound by the Hague Agreement there were nearly 1,300 Hague Agreement international registrations held by a party based in China. Both Australia and New Zealand have yet to join the Hague Agreement. So far there have been 71 Hague Agreement registrations held by a party based in Australia and 9 held by a party based in New Zealand.

Both Australia and New Zealand have recently completed a free trade agreement with the United Kingdom, and these will enter into force by the end of this month. Although membership of the Hague Agreement is not a prerequisite for the respective free trade agreements to enter into force, both Australia and New Zealand are obliged to make all reasonable efforts to join the Geneva Act of the Hague Agreement.

China’s accession to the Hague Agreement also makes accession by Australia and New Zealand more likely, given that many Australian and New Zealand businesses outsource the manufacturing of their designs to manufacturers based in China. Other regional countries where manufacturing is outsourced to, such as Japan, South Korea and Vietnam, are also members of the Hague Agreement. This will help to counterbalance the cost to the local economies due to the majority of locally registered designs belonging to foreign businesses – which would likely be further exacerbated by acceding to the Hague Agreement.

There are not many requirements that need to be met before a country can join the Geneva Act of the Hague Agreement, with membership of WIPO (and by implication the Paris Convention) and a maximum term of at least 15-years from the filing date being the main ones.

New Zealand’s design’s legislation appears to be already compliant with the Hague Agreement, although it would need to make declarations regarding optional aspects that differ from the approach adopted under the Hague Agreement. In particular, the Hague Agreement allows publication to be deferred for up to 30-months from the priority date, whereas New Zealand currently has no option to defer publication. Apart from some exceptions New Zealand requires applications to be accompanied by a statement of the features of the design for which novelty is claimed. This will likely require a declaration that the application must contain a brief description of the reproduction or of the characteristic features of the design that is the subject of that application. As the Hague Agreement does not examine for novelty New Zealand’s local novelty standard (albeit taking into account internet publications) is not an issue.

In order to be compliant with the Hague Agreement the maximum term of Australian designs will need to change from 10-years to at least 15-years from the filing date. It will also require a declaration stating that it allows publication to be deferred by a maximum of 6-months.

The Hague Agreement is one of several international treaties that have been formulated through diplomatic conferences held in the city of Hague in the Netherlands. China recently deposited its instrument of accession to another such international treaty - the Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents (Hague Convention), also known as the Apostille Convention, which will enter into force in China on 7th November 2023.. This convention reduces the chain of authentication needed to certify documents in order for them to have legal effect. The Convention reduces all of the formalities of legalisation to the simple delivery of a certificate in a prescribed form, entitled “Apostille”, by the authorities of the State where the document originates. This certificate, placed on the document or on a slip of paper attached thereto called an "allonge", is dated, numbered and registered. Once this convention takes effect in China it will reduce business costs for businesses in other convention states (such as Australia and New Zealand) and similarly reduce the costs for Chinese businesses transacting with businesses in other convention states.

Author: Quinn Miller

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