Industrial designs. International registration
You may want to register your design outside of the Republic of Moldova, to obtain protection in the whole of the European Union (EU), as well as in other countries outside the EU or even beyond. The Hague System for the International Registration of Industrial Designs provides a centralized registration system where you can e-file up to 100 designs and target over 55 territories in one single application that you could use to claim priority in further filings.
The Republic of Moldova is Member to the 1960 (Hague) and the 1999 (Geneva) Acts of the Hague Agreement (1925). Any individual or business in the Republic of Moldova can file an international application under the Hague System. For more information on filing an international application, geographical coverage and fees, and to get started, please go to www.wipo.int/hague/en.
An application for the international registration of an industrial design may be filed personally by the applicant or through a patent attorney. Designation of a patent attorney is not compulsory.
Where the applicant designates a patent attorney, the latter may be any person chosen by the applicant. For the selection of a patent attorney, the Hague Agreement does not provide for any restrictions on the professional conditions (qualification) or territory (nationality or residence).
According to the Hague Agreement, an applicant may designate a patent attorney resident in another than the applicant’s country of origin (it is not obligatory for the country of the patent attorney to be party of the Hague Union).
The applicant may be represented by a single patent attorney. Where more patent attorneys are indicated in the application, only the first mentioned may be registered as such. Where a company or partnership of patent attorneys was indicated as patent attorney to the International Bureau, it shall be regarded as one patent attorney (Rule 3(1) of the Common Regulations).
Effects of the patent attorney designation.
Designation of a patent attorney before the International Bureau has the effect of substitution of the applicant/owner with the patent attorney. Thus, the Rule 3(4) of the Common Regulations provides for the following: “the signature of the patent attorney substitutes the signature of the applicant or the owner, except the case where these Regulations expressly provide otherwise”. According to the same rule any communication of the International Bureau (except the ones in relation of which the Regulations expressly provide that a communication shall be addressed both to the applicant/owner, and to the patent attorney) shall have the same effect as if it had been addressed to the applicant or the holder. And contrary: any communication addressed to the International Bureau by a patent attorney shall have the same effect as if it had been addressed to the Bureau by the applicant or the holder.
Cancellation of Recording.
Cancellation of Recording may be requested both by the applicant/holder (“revocation”, and patent attorney (“renunciation”) (Rule 3(5) of the Common Regulations).
Considering the Republic of Moldova is a member of the Hague Agreement according to the 1960 Act and 1999 Act, the international application can be performed in English or French, on the applicant’s option. Consequently, if the international application is filed under the 1960 Act or 1999 Act in full or in part, the applicant may choose one of these two languages.
Sanctions for non-observance of the linguistic requirements. It is important to file the application in one of these two languages for the following reasons:
- such a negligence constitutes an irregularity which is required to be removed within 3 months from the date of the notification received from the International Bureau, on contrary the application will be considered as abandoned, and the International Bureau will return any fees referred to this application, with the deduction of a certain value from the basic fee;
- where the application is not filled in one of the prescribed languages, the application filing date will be delayed.
It means that the application will have the date of filing on which the required correction (that is, the application performed in one of the prescribed languages) is received by the International Bureau. The application filing date is a fundamental date as it marks the beginning of the protection and it is important to avoid the delay thereof.
Who may (or is authorized) file an international application before the International Bureau?
Regularly, the international application is filed before the International Bureau directly by the applicant. Nevertheless, the Hague Agreement permits to the Contracting Parties to provide in their national legislation the facultative or imperative filing of the application through the National Patent Office. According to the 1960 Act an international application may be filed through the Office of a Contracting Party, provided that this Party permits this procedure. According to the 1999 Act, it is possible to interdict the Contracting Parties the direct transfer by the applicant, but they are not authorized to resist to this fact.
How the application is filed before the International Bureau?
The application can be filed directly with WIPO; nevertheless it is possible to file the application by mail, fax (except applications comprising coloured representations) and by electronic means.
The mode of transfer is very important as it has effect on the date of filing.
All the documents transferred to the international Bureau have the date of the day when they were received by the Bureau. If a period expires on a day on which the International Bureau or the Office concerned is not open to the public, the period shall expire on the first subsequent day on which the International Bureau or the Office concerned is open to the public.
Where the international application comprising the reproductions in black-white is transferred before the International Bureau by fax, this application will have effect exclusively where the application is represented in an official form, and the date of filing is considered the date of transfer by fax provided for that in term of 20 days from the date of transfer by fax it will be sent to the International Bureau the original application. If contrary, the date of filing will be considered the date of receipt of the original application and not of the fax (Administrative Instructions Section 203(b))
Where the application is indirectly filed, through a National Bureau, the date of filing will be the date of receiving the application by the National Office provided that the application will be filed before the International Bureau within a month. If contrary, the date of application filing will be the date of receipt by the Bureau.
The international application consists mainly of a standard form being filled in and representations of the industrial designs the protection of which is requested.
According to the rule 7(1) of the Common Regulations, the international application shall be represented in an official form of the international Bureau.
Beside the classic indications for all the applications (the name and the address of the applicant and if necessary of the patent attorney, number of the filed industrial designs, the claimed priority, etc.) some indications are specific for the international application and require a particular explanation.
Indication of the country with which the applicant is connected(by an effective industrial or commercial enterprise, residence or nationality). Such indications are necessary in order to demonstrate that the applicant is entitled to the international registration and determine the territorial area on which he could obtain protection.
Title of the industrial designs or of the filed objects. The number of the industrial designs in the international application shall not be more than 100, in this case it is the “multiple” deposition.
The rule 7(3)(iv) of the Common Regulations provides that the application on registration shall indicate the exact title of each filed design.
This title shall differ if the question is about a design (bi-dimensional) or a model (three-dimensional). As a result: where a design, that consists in a decorative motive so as a personage or a landscape, the applicant shall point in words the product or products to which or on which this object will be applied; if the question is on a model the applicant shall point exact and in the brief form nature thereof (a chair, spectacles, a clock, etc.) .
All the products representing industrial designs included in an international application shall belong to the same class of the International Classification of Locarno (the “monoclass” deposit) (the rule 7(7) of the Common Regulations), except for ornamental products.
Designation of States of protection. The protection of industrial designs, objects of international registration, shall be obtained exclusively in the member-states of the Hague Union.
For the residents of the Republic of Moldova it shall be filled in the “form of the international registration regulated exclusively or partially by the 1999 Act and/or by the 1960 Act”.
Upon the filing of the application it is important to the applicant to designate all the States of protection. As opposed to the Madrid system on the international registration of marks, the Hague Agreement does not provide the opportunity of the additional designation of a State after filing the application.
Limits of protection in the State of origin of the applicant. Does the applicant have possibility to obtain protection in the “state of origin” marking it in the form of the international application?
The Article 7 of the 1960 Act declares that the international application produces effect in the state of origin of the applicant where the national legislation does not provide for otherwise.
In accordance with the Art.14(3)(a) of the 1999 Act, any contracting party the office of which is an office carrying out examination may by a declaration notify the Director General that in case where this contract party is the party of the applicant, the designation of this party in the international registration shall not have effect.
Where the contracting party making the declaration mentioned in the Art. 14(3)(a) is pointed in the international registration as a contract party of the applicant and also as a designated contract party, the International Bureau does not take in consideration designation of this contract party.
The Republic of Moldova permits to be designated in the international application if it is the State of origin.
Description. There is an option to include in the application a description of the industrial designs (rule 7(5)(a) of the Common Regulations). According to the rule 11(2), the description may refer exclusively to the ornamental characteristics of the industrial design being visible in the representations, except the technical features relating to the function of the filed object or possibility of its application.
In order to obtain the protection in Romania the description is obligatory.
Graphical representations. The graphical representations shall be filled in a rectangle, without comprising any other representations. Photographs or other graphical representations or parts thereof shall not be folded, clipped or marked in any way. This provision may be explained by the fact that the representation of an industrial design in the Bulletin published in the electronic form is realized by a numerical process. “The tetragonal rectangle” mentioned in these Instructions may be any tetragon with the right angles (a square or a rectangle).
Where the same design has to be applied on more products that form an ensemble (e.g. table service), only one product from the ensemble (e.g. a plate) may constitute the subject of filing and a figure in the photographs or other graphical representations enclosed to the application (Administrative Instructions 401).
Representations numbering. Each industrial design of the multiple filing is identified by a different number, situated on the margins of the representations.
If the same object is represented under the different angles, the numbering shall contain two digits separated by a dot: 1.1, 1.2, 1.3… for the first object; 2.1, 2.2, 2.3… for the second object etc. (Administrative Instructions 405).
Dimensions of the graphical representations. Representation of each design enclosed to the application shall have the dimensions in which the applicant wishes to publish them. However, the Section 402(b) of the Administrative Instructions sets out the maximal and minimal dimensions: not exceeding 16x16 cm and one of those dimensions of a design must be of at least 3 cm.
Contents of the graphical representations. Graphical or photographical representations constitute the main part of the application.
Actually, the protection of the filed industrial designs covers only the characteristics visible on the representation. Characteristics not shown in the representations shall not be protected even if it exists. For this reason, it is important to present the object from different angles; views from different angles shall be included in different photographs or other graphic representations. (e.g., clothes represented both from the front and back).
The rule 9 of the Common Regulations and the Administrative Instructions provide for certain specifications on the content of the representations. A representation may constitute a design only if a so called abstraction represents a product on which it is applied.
The graphical representations shall represent the industrial design alone or the product in relation to which the industrial design is to be used, excluding any other objects, accessories, persons or animals (Section 402 of the Administrative Instructions). A product shall be represented at least once in the position in which it is usually used.
This provision is considered as obligatory by the International Bureau of WIPO. For example, the library shall be reproduced without books, a cloth – without the person wearing it, a frame – without the photograph, a vase – without flowers etc. This exigency is provided for to void the fact where, being under cover of an application for a single product (and paying a single fee series), the applicant should in reality invoke protection for several different designs or models.
The filed photographs must be of a professional standard, there are not admissible photographs shaded with ink or correcting fluid. There is also admissible the electronic reproduction of photographs where they respect all above mentioned requirements.
The photographs or other graphical representations shall be of the professional standard and have all the edges cut under the right angles (Administrative Instructions 404).
The products in representations shall be mainly represented in axonometry; they may contain shadows and cross-hatchings destined for making visual the relief thereof. Moreover, there are not admissible technical drawings representing an object in section or in plan with axes of symmetry and sides, as well as with explicative text or legends represented onto or close with the objects (Administrative Instructions 402).
It should be noticed that on the base of the rule 9(1)(a) of the Common Regulations, representations of a product shown from different angles at the option of the applicant may be the same representation or the independent ones. In the rule 9(1)(a) of the Common Regulations it is specified that the same product may be shown from the different views from different angles but in different graphical representations.
Quality of the reproductions. Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. The rule 9(2)(a) of the Regulation of application provides that all the representations shall be of a irreproachable quality while they are fundamental for the extent of the protection. Moreover, the rule 9(2)(a) provides for that the representations shall be sharp and admissible for publication. The industrial designs shall be represented against a neutral plan background. (Administrative Instruction 404(a)).
As it was noticed, from the date of the receipt of the international application, the International Bureau WIPO verifies if it fulfils the formal conditions. Taking in consideration that it carries out exclusively the formal examination, the International Bureau does assess the novelty of the filed industrial designs and as a result it can not reject the application on such grounds.
Processing of the regular applications. If the application fulfils the prescribed requirements, the International Bureau registers it in the International Register, publishes it in the Bulletin of International Industrial Designs which is placed on the WIPO site. At the same time the International Bureau sends to the international application owner a certificate containing data registered in the International Register.
Processing of the non-regular applications. If the International Bureau finds that the international application does not, at the time of its receipt by the International Bureau, fulfil the applicable requirements, it shall invite the applicant to make the required corrections within three months from the date of the invitation sent by the International Bureau (rule 14(1) of the Common Regulation).
If the international application was performed through an office, the International Bureau sends to this office a copy of the letter addressed to the applicant referred to the detected irregularities (rule 14(2)(e) of the Common Regulations).
If the irregularities were not remedied within three months, the International Bureau considers the application as abandoned and shall inform the applicant about this fact (rule 14(3) of the Common Regulations).
By virtue of Art.10(3)(a) of the 1999 Act and the art. 6 of the 1960 Act, each application fulfilling the prescribed requirements is object of publication in the Bulletin of the International Industrial Designs.
This publication is made monthly in the bilingual edition (French and English). Beginning of March 1999 (that is beginning of publication of the applications registered in January 1999), the mode and contents of publication differ from the prior filed applications.
So, for the applications filed from January 1, 1999 it is carried out the electronic publication, containing all the bibliographic data and graphical representations of the given industrial designs applications.
The principle of the direct publication of the application. The art. 10(3) of the Act of 1999 and the art 6 of the Act of 1960 provide that any application fulfilling the prescribed requirements is published in the Bulletin of the International industrial Designs. This publication is substituted by the publication made according to the national publication.
On the other hand, publication of the international application in the Bulletin of the International Industrial Designs (that is addressed to all the national offices) takes place of the national publication and, therefore, any other publication can’t be requested by the contractual States.
Exception: deferment of publication. The prescribed period for deferment of publication in respect of an international application governed exclusively by the 1999 Act shall be 30 months from the filing date or, where priority is claimed, from the priority date of the application concerned (rule 16(1) of the Regulation on application).
The maximum period for deferment of publication in respect of an international application governed exclusively by the 1960 Act or by both the 1999 Act and the 1960 Act shall be 12 months from the filing date or, where priority is claimed, from the priority date of the application concerned (rule 16(1)(b) of the Regulation on application).
In accordance with Article 19 of the 1999 Act, the international registration shall have effect for the initial term of 5 years from the date of the international registration. The international registration may be renewed for the additional two terms of 5 years in accordance with the prescribed procedure and paid fees. If in the contracting States the term of validity is more than 15 years, the international registration may be renewed for such states for the additional periods of 5 years up to expiration of the full term of protection according to the national legislation.
In virtue of Art. 11 of the 1960 Act, the international registration in full or in part consists for the first period of 5 years and may be renewed for an additional period of 5 years, the minimal term of protection being 10 years.
Moreover, where the national legislation of a contracting State provides for the national registration a period more than 10 years, the international registration for this state may be renewed for the additional period of 5 years up to the expiration of the total term of protection admitted for the national registration.
Art. 11(3) of the 1960 Act permits also for all the contracting states in the frame of the national legislation to limit the term of the industrial design protection which have been subject of the international registration up to 10 years.
The owner is entitled, at the expiration of the two 5 years periods, to renew the international protection for a certain state, to learn the maximum term of protection provided by the national legislation of the respective state in order to be assured by the validity of the renewal (information on the www.wipo.int).
Any requested renewal shall be registered in the International Register without a special designation of the International Bureau. Such situation may be explained by the fact that the Hague Agreement does not provide for an obligation in relation of the contracting States to notify the International Bureau on the maximum term of the industrial design protection by the national legislation; the International Bureau is not in right to prevent the requested renewal.