Gowling WLG (International) Inc - Russia
On April 3 2017 President Putin signed a law ratifying the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The Hague Agreement was first adopted in 1925, with the Geneva Act of July 2 1999 being its latest revision. Russia signed the Geneva Act on July 6 1999 but has only now ratified it.
The Hague Agreement is designed to facilitate the protection of industrial designs in multiple countries or regions by allowing applicants to file a single application in a single language (English, French or Spanish) as opposed to filing multiple separate national applications in each member state. International design applications are reviewed by the International Bureau of the World Intellectual Property Organisation for compliance with the Hague Agreement’s formal requirements. Applications are filed with the International Bureau either directly or through the national patent offices of member states. Most applicants find it more practical to file directly with the International Bureau as it allows them to avoid transmittal fees. When the formal requirements are met, the International Bureau registers the industrial design in the International Register, publishes the international registration in the International Designs Bulletin and sends copies of the application to national patent offices indicated in the application for substantive examination. The international registration grants protection in a member state under the laws of that member state.
The Hague Agreement is expected to significantly accelerate the process of industrial design registration for international applicants seeking protection in Russia. The average time needed to prosecute an industrial design registration before the Russian Patent and Trademark Office is one-and-a-half years. The Hague Agreement provides for immediate registration of a design in those countries which do not require substantive examination. However, substantive examination is required in Russia, prompting the Patent and Trademark Office to state that it may refuse protection for industrial designs for up to 12 months from the date of publication of the international registration.
The Hague Agreement simplifies the renewal of an industrial design registration through a single procedural step. The Geneva Act of the Hague Agreement specifies that the term of industrial design protection is five years and can be renewed for at least two five-year periods. However, if the legislation of a member country provides for a longer term of protection for national applicants, international applicants filing applications according to the Hague Agreement can enjoy the same period of protection. In Russia, the period of industrial design protection is five years, with the possibility of renewing this for four five-year periods or up to 25 years.
More than 50 states and intergovernmental organisations are members of the Geneva Act of the Hague Agreement, including the European Union, the African Intellectual Property Organisation, the United States, Japan, South Korea and the United Kingdom. The Geneva Act will become effective in Russia 180 days after the date of its official publication on April 5 2017.
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