October 10, 2022
The Brazilian Federal Senate approved on Thursday (October 6) Draft Legislative Decree #274/22, which provides for Brazil's accession to the Geneva Act of the Hague Agreement on the Industrial Designs international registration. As it had already been approved by the Brazilian House of Representatives on August 29, 2022, the draft will be forwarded to Senate President Rodrigo Pacheco for approval.
The purpose of the Hague Agreement – adopted in Geneva on July 2, 1999 – is to simplify procedures and reduce costs for the Industrial Designs registration abroad. Under the agreement, from an application filed with the International Bureau of the World Intellectual Property Organization (WIPO), it will be possible to apply for the protection of an Industrial Design in the 94 member states, including the United States, Japan and all countries of the European Union and the United Kingdom.
Accession to the agreement is one of the initiatives that make up Strategic Goal #3 (“Integrating Brazil as a winning country in the international Intellectual Property system”) of the 2021 Action Plan of the Brazilian Patent and Trademark Office (BRPTO). In this sense, the Office created, on September 23, 2020, a Working Group that studied the technical feasibility of accession, prepared the draft of the enactment that will govern the prosecution of industrial design applications under the International Hague System and participated in the preparation of the Instrument of Accession and the Declarations filed with WIPO. BRPTO’s system has been updated for accession to the agreement and a new Industrial Design Handbook with the agreement’s procedures is expected.
The expectation is that Brazil's accession will reduce transaction costs in sectors dedicated to design and innovation. In the explanatory memorandum, the government asserts that the proposal expands the country's common legal basis with its main trading partners, which should ease the negotiation and conclusion of trade agreements.
The Hague Agreement has 34 articles and describes the means for parties and individuals to apply for an international application, including priority claims, fees, effects, and amendments, as well as procedures regarding non-compliances, postponement, and rejection of applications.
WIPO’s International Bureau, when receiving an application, checks whether it meets the necessary formality requirements, such as those relating to the quality of drawings reproductions or industrial models and the payment of fees. The applicant is informed of any non-compliances that need to be rectified within the prescribed period of three months, otherwise, the international application is considered to have been abandoned. Additionally, one of the main features of the Hague system lies in the possibility for the Office of each designated Contracting Party to refuse protection, in its territory, to an industrial design that does not fulfill the substantive conditions of protection provided by its domestic legislation.
In the event of a refusal, the applicant has the same remedies as they would have if they had filed the industrial design in question directly with the Office which issued the refusal. The ensuing procedure takes place solely at the national level; an appeal against a refusal must be submitted by the applicant to the competent authority of the country concerned, within the time limit and in accordance with the conditions set out in the corresponding domestic legislation. WIPO’s International Bureau is not involved in such procedure.
Our team is closely following up on all measures related to Draft Legislative Decree #274/22 and assisting clients in issues related to Industrial Design protection. For more information on this subject, send an email to patents@lickslegal.com.
