Coming Soon to Mexico: Protection for Industrial Designs Under The Hague Agreement

Starting June 6th, companies can use the Hague Agreement Concerning the International Registration of Industrial Designs to protect industrial designs in Mexico. The Hague Agreement provides a mechanism for protecting an industrial design in multiple jurisdictions—covered by the now 64 contracting states with Mexico's accession—based on a single international application filed with the WIPO International Bureau (IB).

Companies can reap a number of benefits by using the Hague Agreement instead of filing and prosecuting individual applications for industrial design protection in each of the desired markets.

• A single application can be prepared and filed to gain protection in multiple jurisdictions, minimizing attorney fees.    
• Multiple designs, up to 100, can be included in each application, though the designs must belong to the same class of the Locarno Classification. This gives the applicant time to determine which of the designs will be of most value before a jurisdiction requires election between them.
• In contrast with the Paris Convention, applicants do not need to track and meet a 6-month deadline for filing in additional jurisdictions where protection is desired. All markets of interest can be covered with the original filing.
• Applicants only need to navigate and manage a single process before WIPO, rather than repeating the same process with multiple IP offices.

Even though these benefits are attractive, companies need to keep in mind that using the Hague Agreement may not be the best choice in certain situations.

• The international design application will be published. Publication can be delayed, but the applicant must remember to make a request.
• Government fees in each of the designated jurisdictions must be paid when filing the international application. Companies may prefer to manage budgets by filing a single application in one jurisdiction and then taking advantage of the 6-month delay afforded by the Paris Convention to file elsewhere.
• Currently, there are only 64 contracting parties to the Hague Agreement. Individual applications must be filed (in addition to the international application) to gain protection outside the covered jurisdictions. Notably, China is not (yet) a member.

As always, one-size does not fit all. Companies should continue to monitor accessions to the Hague Agreement to determine whether filing and prosecuting an international application provides the right value for protecting industrial designs.

Learn more about the Hague Agreement, and other WIPO-managed treaties, on WIPO's Hague – The International Design System webpage, including a short video introduction.