International Design Registrations: A Guide to the Hague System

Industrial Design Registrations

The Hague System for the international registration of industrial designs, administered by the World Intellectual Property Organization (WIPO), offers a centralized international registration system under the Hague Agreement. Design registrations in the Hague System are very similar to design patents in the US patent system. The Hague Agreement provides businesses and designers with a simplified means of obtaining protection for their industrial designs across multiple jurisdictions through a single international application.

What Designs Can Be Protected?

Industrial design registrations under the Hague System protect the aesthetic aspects of products, covering elements such as shape, color, pattern, and texture. An "industrial design" refers to the ornamental or aesthetic aspects of an article, which may consist of three-dimensional features such as the shape or surface of an article, or two-dimensional features such as patterns, lines, or color. To qualify for protection, the design must be new and original, adhering to the formal requirements outlined in the agreement concerning the international registration of industrial designs.

To be eligible for registration under the Hague System, the article must be a tangible, manufactured product that can be produced industrially or by hand. Examples of eligible articles include, but are not limited to, consumer goods, furniture, electronic devices, textiles, and packaging. The design must not be purely functional; it must have an ornamental character that enhances the appearance of the article.

The Hague System accommodates various product categories under the international classification known as the Locarno Classification. The Locarno Classification is an international classification system established by the Locarno Agreement, which organizes industrial designs into a hierarchical structure of 32 main classes and numerous subclasses. This classification system enables consistent categorization and comparison of designs across different jurisdictions.

World Intellectual Property Organization Locarno Classification

The Locarno Classification is essential for determining the scope of protection and facilitates searches for prior designs. Each class groups products with similar functions or characteristics, ensuring that multiple designs submitted within a single application belong to the same class.

Some key Locarno classes include:

• Class 1: Foodstuffs

• Class 2: Clothing and haberdashery

• Class 3: Travel goods, cases, parasols, and personal belongings

• Class 9: Packaging and containers for transport or handling goods

• Class 12: Means of transport or hoisting

• Class 14: Recording, communication, or information retrieval equipment

• Class 26: Lighting apparatus

Each main class contains several subclasses that provide more detailed differentiation of design categories. For example, Class 12 (Means of transport) includes subclasses for automobiles, bicycles, and aircraft.

Applicants must ensure that all designs included in the same international application belong to the same class under the Locarno Classification. The classification assists intellectual property offices and examiners in assessing the novelty and originality of the submitted designs.

Technical Requirements for Protection

To secure international design protection, applicants must comply with the formal requirements set by WIPO. These include:

Reproductions

High-quality visual representations of the design must be provided in the application. These reproductions should clearly and accurately depict the design from multiple angles to ensure comprehensive disclosure. WIPO requires images to be submitted in a specific format, ensuring that examiners and third parties can correctly interpret the protected features. The reproductions must not contain any extraneous elements, such as text or backgrounds that could obscure the design's appearance.

Priority Documents

If an applicant is claiming priority based on an earlier filing, relevant priority documents must be submitted. These documents serve as proof of the applicant’s earlier filing date, helping to establish precedence over potential conflicting applications. The priority claim must be made within six months of the filing date of the earlier filed application (e.g., a US design patent application), in accordance with the Paris Convention.

Same Locarno Classification

For applications that include multiple designs, all designs within the same international application must belong to the same Locarno Classification. This requirement ensures that designs grouped within a single filing are related in function and appearance. Incorrect classification can lead to processing delays or rejections, making it essential for applicants to verify proper classification before submission.

Foreign Filing License

Certain jurisdictions, such as the United States, require applicants to obtain a foreign filing license before submitting an international application. This requirement is in place to ensure that sensitive technologies or designs are not disclosed internationally without government approval. Failure to obtain a foreign filing license when required can result in penalties and may invalidate the international application. Applicants should check the specific regulations of their home country before proceeding with an international filing.

Description

While not mandatory, applicants may include a description to further clarify the design’s unique features. This description can highlight aspects of the design that may not be immediately apparent in the reproductions. The description should be concise and focus solely on the visual aspects of the design, avoiding any functional explanations. Some jurisdictions may require descriptions to meet specific legal standards, so applicants should ensure compliance with the designated contracting parties' national laws.

Contents of an International Application

A valid international design application must contain:

Applicant Information

The application must include details about the applicant, such as their full name, address, and contact information. If the applicant operates a business, the name and location of their industrial or commercial establishment should also be included. This information ensures that the applicant is properly identified and that official correspondence can be directed to the correct entity.

Statement of Entitlement

The applicant must provide a statement of entitlement, establishing their right to file under the Hague System. This entitlement may be based on the applicant’s habitual residence, nationality, or domicile in a contracting party. Additionally, companies may qualify based on their industrial or commercial establishment within a contracting party’s jurisdiction.

Reproductions of the Design

The application must contain high-quality visual representations of the design to allow for clear and accurate assessment. The images should be consistent with the Hague System’s guidelines and must effectively display all pertinent design elements.

Priority Claim

If applicable, the application should include a priority claim, referencing an earlier application filed in another jurisdiction. The claim must be supported by certified copies of the original application and meet the six-month deadline established under the Paris Convention.

Designation of Contracting Parties

Applicants must specify the contracting parties where they seek protection. The international application allows designation of multiple jurisdictions, facilitating broader protection under a single filing.

Payment of Required Fees

Applicants must pay the following fees:

Basic Fee: Covers the cost of processing and registering the application.

Publication Fee: Pays for the inclusion of the design in the International Designs Bulletin.

Designation Fee: A variable fee based on the number of contracting parties designated.

Applications can be filed directly with the International Bureau of WIPO via the eHague platform or through an indirect filing with a national intellectual property office.

Rights Provided by International Registration

The international registration of industrial designs grants holders the same rights as if the design were registered under the national law of each designated contracting party. These rights include:

Exclusive Rights to the Design

An international registration provides the holder with exclusive rights to the design, preventing others from using, manufacturing, selling, or distributing the design without authorization. This exclusivity ensures that the design owner retains control over its commercial exploitation and can license or assign the rights as needed.

Prevention of Unauthorized Use

With an international design registration, the holder has the legal authority to prevent unauthorized parties from copying, reproducing, or selling products incorporating the protected design. This right extends to any jurisdiction where the design is registered, allowing enforcement against counterfeiters and infringing competitors.

Legal Remedies in Case of Infringement

If an unauthorized party infringes on the registered design, the holder may take legal action to enforce their rights. Available remedies vary by jurisdiction but typically include:

Cease and Desist Orders: Courts may issue injunctions to prevent continued infringement.

Monetary Damages: The rights holder may seek compensation for losses incurred due to unauthorized use.

Seizure of Infringing Goods: Authorities in some jurisdictions may seize counterfeit or infringing products.

Criminal Prosecution: In severe cases, willful infringement may result in enhanced damage s or punitive damages in civil cases and possibly criminal charges.

Public Notice and Deterrence

The registration is published in the International Designs Bulletin, serving as official notice of the granted rights. This public disclosure helps deter potential infringers by demonstrating that the design is legally protected and subject to enforcement actions.

By securing these rights through an international design registration, businesses and designers can safeguard their intellectual property across multiple jurisdictions, ensuring long-term commercial success and brand integrity.

Enforcement of International Design Rights

Enforcement of industrial designs registered under the Hague System is subject to national law in each designated contracting party. Design holders must initiate legal action in the relevant jurisdiction, with enforcement mechanisms varying from country to country. The international registration does not automatically provide global enforcement. Enforcement of international design rights requires understanding the legal frameworks in each designated jurisdiction. While the Hague System streamlines the registration process, design holders must take proactive measures to enforce their rights under national laws. Strategic enforcement through courts, administrative bodies, and customs authorities ensures that industrial design rights remain a valuable asset in global commerce. Here are some example jurisdictions:

Enforcement in the United States

In the United States, enforcement of industrial design rights is primarily pursued through litigation in federal courts. A design patent holder must file a lawsuit in one of the U.S. District Courts, which have jurisdiction over patent infringement claims. The U.S. International Trade Commission (USITC) also provides an avenue for enforcement under Section 337 of the Tariff Act of 1930, allowing design holders to seek exclusion orders against infringing imports.

Remedies in U.S. courts may include:

• Injunctive relief to prevent further infringement.

• Monetary damages, including lost profits or reasonable royalties.

• Enhanced damages for willful infringement.

Enforcement in the European Union

In the European Union, design holders may enforce their rights before national courts in the member state where infringement occurs. Registered Community Designs (RCDs) under the European Union Intellectual Property Office (EUIPO) are enforceable across all EU member states. Actions for infringement can be brought before designated Community Design Courts in each member state, such as the Tribunal de Grande Instance de Paris in France.

Remedies in the EU may include:

• Injunctive relief, preventing further commercial exploitation.

• Damages or an account of profits.

• Seizure of infringing goods at customs borders under EU Regulation 608/2013.

Enforcement in Mexico

In Mexico, industrial design rights are enforced under the authority of the Mexican Institute of Industrial Property (IMPI). A complaint can be filed with IMPI, which has the power to investigate and sanction infringers. If further legal action is required, disputes can be escalated to the Federal Court of Administrative Justice or Mexican federal courts.

Available remedies include:

• Administrative fines against infringers.

• Orders to cease infringing activities.

• Seizure and destruction of infringing goods.

• Civil damages, including compensation for lost revenue.

Contracting Parties to the Hague System

The Hague System currently includes over 90 contracting parties, covering major markets such as the European Union, the Russian Federation, and the Democratic People's Republic of Korea. The system enables applicants to secure protection in multiple jurisdictions with a single international design application, streamlining administrative procedures and reducing costs.

Membership and Growth

The Geneva Act of the Hague Agreement facilitates the expansion of the system by allowing intergovernmental organizations, such as the European Union and the African Intellectual Property Organization (OAPI), to join as contracting parties. This significantly broadens the reach of the system and ensures that users can protect their designs in an increasing number of jurisdictions.

Over the years, the Hague System has continued to expand its membership. Countries such as Canada, China, and South Korea have joined in recent years, enhancing the system’s attractiveness for global businesses. The participation of these major economies strengthens the Hague System as a viable alternative to multiple national filings.

Notable Contracting Parties

• European Union (EU): A single designation covers all 27 EU member states, providing broad protection across one of the world’s largest markets.

• United States: The U.S. joined the Hague System in 2015, allowing applicants to file for design patents through the international application process.

• Japan & South Korea: Both countries are active participants, with strong industrial design protections in place.

• China: As a more recent member, China’s inclusion has provided businesses with expanded opportunities to protect designs in one of the world's largest manufacturing and consumer markets.

• Russia & Eurasian Economic Union (EAEU): The system extends coverage to Russia and other Eurasian markets, which are important for trade and industry.

Business Value of an International Registration

• Cost Efficiency: A single application replaces multiple national filings, significantly reducing administrative burdens and legal expenses. Instead of navigating separate application procedures in different jurisdictions, applicants can streamline the process through a centralized system. This also eliminates the need for translations, different filing formats, and legal representatives in each country, ultimately lowering overall costs.

• Global Market Reach: By allowing protection in multiple countries under a single application, the Hague System enhances market expansion opportunities. Companies can secure rights in key markets without the need for numerous filings, making it easier to scale operations internationally. This is especially beneficial for businesses with global distribution networks, as it provides consistent design protection across jurisdictions.

• Competitive Advantage: Protecting unique designs helps businesses establish a strong market presence and prevent competitors from copying or imitating their products. By securing exclusive rights to a design, companies can differentiate their products from those of competitors, enhance brand value, and build consumer trust. Moreover, a registered design can serve as a valuable asset for licensing agreements and business negotiations, further strengthening the company’s market position.

• Enhanced Enforcement Mechanisms: An international design registration provides a legal basis for enforcing rights in designated jurisdictions. If a competitor or counterfeiter copies a protected design, the registration enables the rights holder to take legal action more efficiently. Many jurisdictions offer customs enforcement and border protection measures that help prevent the importation of counterfeit goods, thereby safeguarding brand integrity.

• Flexible Publication Options: Applicants have the option to defer publication for up to 30 months, allowing them to strategically time market entry and product launches. This feature is particularly useful for businesses that want to maintain secrecy while finalizing product development or aligning with marketing campaigns.

• Increased Business Valuation: Registered industrial designs can enhance a company's intellectual property portfolio, adding value to the business. Design registrations can provide value in licensing agreements, mergers, and acquisitions, and can even be used as collateral in financial transactions. Investors and stakeholders often perceive a strong IP portfolio as a sign of a well-established and innovative business.

By utilizing the benefits of the Hague System, businesses can achieve cost-effective, broad-based international design protection while strengthening their competitive position in the global market.

Hague Agreement Provides a Valuable IP Tool

The Hague System provides a highly valuable mechanism for securing effective industrial or commercial design protection in many important markets. With its integration into major markets, including the European Union and key economic regions, the Hague System is the best avenue for global design protection. If you need assistance with pursuing design protection, contact our office for a free consultation.

© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.