International registration of an industrial design under the Hague System

Filing an international application under the Hague Agreement procedure allows obtaining legal protection for the appearance of a product in all contracting states, currently numbering 96, including the Russian Federation, European countries, China, the USA, and many others. The term of legal protection for an industrial design is established by the national legislation of each contracting state and ranges from 15 to 25 years, requiring payment of corresponding fees every 5 years to maintain protection in the territories relevant to the rights holder.


Within a single application, up to 100 design variants can be filed; the sole condition is that they must belong to the same Locarno class (Locarno Classification).


Any person registered or permanently residing in a contracting state of the Hague Agreement or having an industrial or commercial establishment in one of the contracting states may file an application.

SUBMIT AN APPLICATION

DESIGN PROTECTION HAS A TERRITORIAL PRINCIPLE, MEANING IT IS PROTECTED ONLY IN THE COUNTRY WHERE IT IS REGISTERED. THEREFORE, IF YOUR COMMERCIAL ACTIVITIES EXTEND BEYOND THE RUSSIAN MARKET, IT BECOMES NECESSARY TO PROTECT EXCLUSIVE RIGHTS AND REGISTER THE DESIGN ABROAD.

International registration of an industrial design under the Hague System
Функционирование Гаагской системы международной регистрации промышленных образцов регулируется Гаагским актом 1960 года и Женевским актом 1999 года

  • An application for industrial design registration under the Hague System can be filed based on a filed national (e.g., Russian) industrial design application, claiming priority within 6 months from its filing date, OR filed directly with WIPO without an initial priority application, designating any interested states party to the agreement.

  • We note that the application is examined by the office of each designated country according to its national legislation. For example, Russia and China enforce the rule of unity of all variants claimed within one application.


  • Registration of the industrial design is carried out by filing a single international application and paying one set of fees.

  • Filing an application for industrial design registration allows seeking protection in more than 90 countries worldwide.

  • Simplified system for subsequent "maintenance" of the registration by filing a single request for changes, renewal, or assignment of rights for all or part of the designated countries.

Scope of services provided:

  • Preparation of the application for international design registration based on provided drawings/photos clearly showing the entire product and its features; payment of official WIPO fees; electronic filing of the application with WIPO;

  • Notification of the client about registration and assignment of the registration number; forwarding incoming WIPO notifications regarding the international industrial design registration to the client;


  • Notification of the client about received provisional refusals and decisions from national offices regarding the international registration.

  • If queries concerning the international registration are received from national offices, the cost of responding will be agreed with you. This cost will include the fee of the patent attorney in the respective country and will depend on the examination arguments.


Registration of an industrial design under the national procedure
Alongside providing services for the registration and protection of trademarks within the Russian Federation, our Agency has extensive experience in registering trademarks abroad: in CIS countries, as well as countries in Europe, Asia, and America: including popular current business expansion destinations such as Brazil, Spain, Turkey, United Arab Emirates (UAE), Saudi Arabia, China, and also Korea, Japan, Singapore, Mauritius.









Scope of services provided:



Registration of an industrial design abroad allows obtaining legal protection for the design of the product you manufacture or sell in the territory of interest and protects the product from copying. To file an application abroad based on a Russian application, a certified copy of the application must be obtained from the Russian office and then sent to the country where protection is sought. No changes to the design are permitted at this stage.
Case management support (monitoring deadlines; correspondence with foreign attorneys; receiving and analyzing correspondence)
An industrial design application can be filed claiming priority based on a Russian or international application, if filed within 6 months of the filing date of the Russian or international application with Rospatent. In this case, designs that became known after the filing date of the Russian application will not be cited against it.
Registration of an industrial design under the national procedure is carried out with the help of our partners – patent attorneys in the specified countries.
Provision of comprehensive information on required documents, fees, timeframes, and stages of the registration procedure abroad, and we will agree on the fees of foreign attorneys.
Case management support (monitoring deadlines; correspondence with foreign attorneys; receiving and analyzing correspondence)
In case of receiving a query/provisional refusal/third-party opposition in the application materials, we will advise you and agree on a further strategy.
Invoices from foreign attorneys are paid by us after receiving the corresponding payment in RUB from you; you won't need to transfer currency abroad
Registration within the member states of the Eurasian Patent Organization
Filing an application for a Eurasian industrial design patent
UNDER THE PATENTING PROCEDURE IN ACCORDANCE WITH THE EURASIAN PATENT CONVENTION

A Eurasian application may include up to 100 industrial designs belonging to the same Locarno class; each design may be represented by a set of different views of the article, not exceeding 7 images.

The fee for filing one industrial design is 30,000 RUB; for each subsequent design (from the 2nd to the 10th) – 15,000 RUB; for each design starting from the 11th – 7,500 RUB.

To grant legal protection to an industrial design, it must meet the patentability requirements established by the Patent Regulations to the Eurasian Patent Convention (Part II). Additionally, any interested party may file an opposition against the grant of a Eurasian industrial design patent within two months from the date of publication of the corresponding application.




FILING AN APPLICATION FOR A EURASIAN INDUSTRIAL DESIGN PATENT

allows obtaining protection in the following member states of the Eurasian Patent Organization through a single procedure and application processing:


Azerbaijan, Kyrgyzstan, Armenia, Kazakhstan, Tajikistan, Russian Federation



TO GRANT LEGAL PROTECTION TO AN INDUSTRIAL DESIGN

it must meet the patentability requirements established by the Patent Regulations to the Eurasian Patent Convention (Part II). Additionally, any interested party may file an opposition against the grant of a Eurasian industrial design patent within two months from the date of publication of the corresponding application.



TERM OF LEGAL PROTECTION FOR AN INDUSTRIAL DESIGN

The term of legal protection for an industrial design is 5 years from the filing date of the application, with the possibility of subsequent extension up to 25 years, paying the corresponding fee every 5 years.

As of March 2024, the renewal fee amounts are as follows:

8,000 RUB for the first renewal period;

10,000 RUB for the second renewal period;

14,000 RUB for the third renewal period;

18,000 RUB for the fourth renewal period.

The fee is paid for each industrial design protected by the patent.



TO GRANT LEGAL PROTECTION TO AN INDUSTRIAL DESIGN

it must meet the patentability requirements established by the Patent Regulations to the Eurasian Patent Convention (Part II). Additionally, any interested party may file an opposition against the grant of a Eurasian industrial design patent within two months from the date of publication of the corresponding application.



TERM OF LEGAL PROTECTION FOR AN INDUSTRIAL DESIGN

The term of legal protection for an industrial design is 5 years from the filing date of the application, with the possibility of subsequent extension up to 25 years, paying the corresponding fee every 5 years.

As of March 2024, the renewal fee amounts are as follows:

8,000 RUB for the first renewal period;

10,000 RUB for the second renewal period;

14,000 RUB for the third renewal period;

18,000 RUB for the fourth renewal period

The fee is paid for each industrial design protected by the patent.



Which procedure to choose?

The choice of registration procedure by each applicant is based on many factors, which may be more significant for some and less so for others. Before making a choice, the applicant needs to answer several questions, including:

- Is there a basic Russian application or registration?

- Is there a risk of refusal of the trademark application in Russia or a risk of challenging the trademark registration on which the international application or Russian registration will be based (risk of consequences from the dependence of the international registration on the basic Russian application or trademark registration)?

- In which territory is legal protection needed now, and is expansion into other countries planned?


If a country is not a member of the Madrid Agreement and its Protocol, the only option for obtaining trademark protection on its territory is to file an application with the national patent office or seek regional protection if the country is a member of a regional union.


The specialists and patent attorneys of Patent Agency "Ermakova, Stolyarova and Partners" are ready to provide professional assistance and support on all matters related to the international registration of trademarks.

We also provide legal support for transactions involving the further disposal of rights to trademarks. Additionally, we will be glad to provide services for protecting exclusive rights to trademarks throughout their validity period against attempts at cancellation by third parties and unauthorized use.