Since 5 May 2022, companies and designers are able to obtain international design protection also in China. In parallel, Chinese residents are now able to seek international protection of their designs in all countries covered by the Hague System, and in particular the European Union as a whole.
Upon its accession, China made a series of declarations with regard to the 1999 Geneva Act (see here).
Simont Braun highlights nine key implications for design applicants and owners:
1. International applications designating China must contain a brief description of the characteristic features of the design (Article 5(2)(b)(ii) of the 1999 Geneva Act).
2. Additional national fees must be paid for each international application designating China (Article 7(2) of the 1999 Geneva Act).
These additional fees are set at 603 Swiss francs for one international application, 1,117 Swiss francs for a first renewal and 2,205 Swiss francs for a second renewal (see here).
3. International design applications designating China are limited to one design (Article 13(1) of the 1999 Geneva Act).
However:
- For designs incorporated in the same product, two or more similar designs may be included in the same application if the other designs are similar to the design indicated as the main design and the total number of designs does not exceed ten.
- For designs incorporated in products belonging to the same class and sold or used in sets, all products must belong to the same class and be customarily sold or used at the same time. The designs must also have the same concept.
4. Recording a change in ownership in the International Register takes effect in China only after the China National Intellectual Property Administration (CNIPA) has received the certifying documents for that change (Article 16(2) of the 1999 Geneva Act).
5. The maximum duration of protection is fifteen years for international design applications designating China (Article 17(3)(c) of the 1999 Geneva Act).
6. For each international application designating China, the applicant must submit “compliant views” of the product so far as the application concerns a three-dimensional design or a Graphical User Interface (Rule 9(3)(a) of the 1999 Geneva Act).
The requirement of “compliant views” is subject to detailed guidelines provided by the China National Intellectual Property Administration (see here).
7. The period for CNIPA to notify a refusal of the effects of an international application registration designating China is twelve months (Rule 18(1)(b) of the Common Regulations).
8. The international registration takes effect in China:
- within six months from the date of expiration of the twelve months refusal period (Rule 18(1)(c)(i) of the Common Regulations); or
- from the date on which protection is granted according to the laws of China, where a decision regarding the grant of protection was unintentionally not communicated within the twelve months refusal period (Rule 18(1)(c)(ii) of the Common Regulations).
9. Last but not least, the Government of China declared that the 1999 Geneva Act shall neither apply to the Hong Kong Special Administrative Region of China nor to the Macao Special Administrative Region of China. As a result, international design applications designating China shall not take effect in those two regions, until otherwise notified by the Government of China.
Following its accession, China is now the 68th Contracting Party to the 1999 Geneva Act and the 77th member of the Hague Union. The Hague System now covers nine out of ten of the world’s top economic markets, according to the World Bank rankings. This is good news for companies and designers willing to obtain worldwide design protection.
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Please contact Romain Meys for any questions or assistance: romain.meys@simontbraun.eu.
This article is not legal advice or opinion. You should seek advice from a legal counsel of your choice before acting upon any of the information in this article.
