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On China's Accession to The Hague System for The International Registration of Industrial Designs

06

MAY

2022

1. The Hague System

The Hague System for filing an international design application, like many other similar systems (the PCT system for patent or the Madrid system for trademark) managed by WIPO, provides a convenient way to get design protection in multiple jurisdictions through one single design application with the International Bureau, the power of which extends to the formality and procedural matters of the design application. The Hague System is therefore conductive to harmonization of the design regime, particularly the formality requirements on design application.

However, the contracting parties maintain their sovereignty over the substantive aspects of an international design application and decide whether an international design registration can be granted a design right in their jurisdictions or whether it is essentially valid once a third party challenges the validity of the design after its granting. There is a clear line between the responsibility of the International Bureau of WIPO and that of the contracting parties over an international design application. When we talk about the Hague System, we shall never leave all these basic arrangements behind.

I had seen WIPO's officials touring in China, introducing and promoting the Hague System to China over 10 years. China's accession to the Hague System is a result of two-way effort and had been waited for years. Even years before China's accession, WIPO had seen a steep increase of international design applications from China, which ranked in ninth position in 2020.

2. China's design patent system

Design is one of the three types of subject matters afforded protection by China's Patent Law, which was enacted in 1984, almost 200 years later than the first U.S. Patent Law (1790) and the first French Patent Law (1791). This however doesn't mean that China's patent law is 200 years behind. China's patent system was not created out of thin air, but has borrowed from the proven practices of many other countries. As far as China's design system is concerned, the predecessor of the CNIPA learned a lot from Japan. That may explain why China generally requires six-view drawings or photos for a design application. Of course, based on distinctive legal system and culture, China's design system has its own characteristics, which are gradually developed with increasingly close communication and cooperation with other jurisdictions. The litigation of design, however, initially learned a lot from Germany, and later from the U.S.

Examination of design applications generally goes in two divergent routes, the substantive or half substantive examination route and the formality examination route. Needless to say, both routes have their pros and cons. China takes essentially the half substantive examination route, which doesn't examine the novelty and obviousness of a design but examines whether a design is definite and sufficiently disclosed. An example of the formality examination route is the Community design system. The EUIPO registers a design application with no substantive examination in a short time. However, many flawed designs, even without considering novelty and obviousness thereof, are registered, leaving a significant uncertainty to the public and the applicant.

The economy of China is growing very fast, so does the patent system including the design system. The government has taken innovation as the driving force for the country's development and has paid unprecedented attention to IP protection, to stimulate and guarantee the transition from a manufacturing country to a creative country.

3. China's accession to the Hague System

The Hague System harmonizes all procedural and formality aspects of a design application, though it has to leave the sovereignty to the contracting parties in defining the substantive aspects of the design. This is welcome to the public and the applicants if they want to remove any defects in their applications and obtain steady rights. The U.S., Japan, Korea and now China all make certain degree of substantive examination before granting right to a design application whether it is filed directly or through the Hague System. Even those jurisdictions carrying on formality examination only examine whether a design violates the morality and public order.

China traditionally required submitting of drawings or photos comprising six orthographical views and one or more perspective views. This practice conforms to the protection of a design for an entire product. But it has been abandoned for more than ten years, though sufficient views are still needed for disclosing the claimed design definitely and sufficiently. For example, one view for a three-dimensional product can never be acceptable. Instead, the combination of one orthographical view plus one perspective view is normally acceptable, which are sufficient to convince a reasonable person to believe that the claimed design is three dimensional. Whatever, a professional in the design area may have already found that China is not so stringent in this regard as the USPTO, which doesn't have a minimum view requirement but still frequently rejects design applications on the ground of definiteness and/or enablement by looking at the figures rigidly instead of from a reasonable person in the art. With the introduction of so called "partial design" defining an inseparable portion of an entire product, it is expected that the CNIPA will further steer its view requirements, such as allowing broken lines and even shading lines, to adapt to the change and China's accession to the Hague System.

There is concern that China's accession might substantially increase the workload of the Hague System, resulting in backlog of the International Bureau. At least to the officials of WIPO, they have already expected an increase of design applications from China, from their advocation in China and their work with the CNIPA directly or through the platform of the ID 5, or from the data of the international design applications filed by Chinese applicants and the data of the Chinese design applications before the CNIPA, not to mention that China's accession provides an additional choice for applicants from both China and abroad.

Technically, the examination on the formalities of international design applications are not time-consuming. It seems that the workload before registration of the design applications with the International Bureau will not proportionally increased with the increase of design applications, especially with the aid of the WIPO's e-filing system. Besides, it is anticipated a gradual increase of international design applications from China. Some multinational Chinese enterprises might have already used the Hague System or followed the development of the Hague System and its practice, most Chinese enterprises still need some time to get familiar with the operation of the Hague System and file more international design applications.

The CNIPA should have well prepared for handling international design applications designating China. It seems that they will make some basic examination before transmitting the international design applications to the International Bureau if the design applications are filed through it. The CNIPA should have already demonstrated its ability to handle all these matters, noting that they handle a great number of design applications each year.

The increase of international design applications designating the national IP Offices will only bypass the design applications filed directly with the IP Offices, and will not additionally increase the total numbers, because a sophisticated filer is not a bargain hunter in a supermarket. This implies that the workload on the respective IP Offices will not be increased.

4. Conclusion

Although design applications filed through the Hague System are growing fast, a number of applicants still prefer to file design applications in different jurisdictions separately. Whether or not to take the Hague System is completely on the applicants' side. WIPO has worked very hard to improve the Hague system and invites more jurisdictions to access so as to amplify its effectiveness and efficiency as a centralized platform. As one of the many contracting parties, China's accession means that applicants must make more thoughtful considerations when developing their application strategies world widely. Whatever, it shall be applauded because the applicants now have another filing option to obtain design protection in China or in other jurisdictions.

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CCPIT Patent & Trademark Law Office
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