Since May 13, 2015, the United States and Japan can officially be designated for the international registration of industrial designs.
As was the case for the international trademark system, industrial designs were introduced by the Hague Agreement of 1925. The Agreement allows applicants to register an industrial design in several countries by filing one single international application before the International Bureau WIPO.
This filing system offers many advantages. Firstly, it considerably reduces paperwork while allowing registration in several countries. Also, managing the industrial design subsequently becomes easier as renewals, modifications and all other necessary measures to protect the industrial design can be carried out through a single procedure.
Furthermore, it is interesting to note that unlike the international trademark system, filing international industrial designs requires no application or prior registration at a national level.
Finally, the only limitation to this system of industrial design relates to the number of Contracting Parties. Indeed, only Contracting Parties of the Hague Agreement, as updated several times by the Geneva Act of 1999, can be designated for international registration. In other words and once more, similarly to international trademarks, in order to designate certain countries, applicants will still be required to register their industrial designs at the national level and a fortiori go through the relevant paperwork.
While there are currently 95 Contracting Parties to the Madrid Agreement and to the Protocol relating to this Agreement on the registration of international trademarks, there are unfortunately only 64 Contracting Parties for the international registration of industrial designs.
Indeed, several countries have not yet joined the system, including Australia, China, the Russian Federation, Ireland and Mexico. However, the good news is that we can now add the United States and Japan to the list of countries that can be designated.
Although we cannot yet speak of truly international industrial designs, it should be remembered that the system of international trademark as we know it, also took some time before it attracted the number of parties it now boasts of – for the initial Madrid Agreement dates back to 1891 and new members were still added to the list in 2015.