Proposal for a Council Regulation amending Regulation (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs {SEC(2005)1749}
Date: 2005-12-22
Institutions: European Commission
Subjects: EU law, EU relations, EU trade mark, European Union Intellectual Property Office, World Intellectual Property Organisation, designs and models, industrial property

COMMISSION OF THE EUROPEAN COMMUNITIES 

Brussels, 22.12.2005 
COM(2005)689 final 

2005/0274 (CNS) 

Proposal for a 

COUNCIL REGULATION 

amending Regulation (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of 
the European Community to the Geneva Act of the Hague Agreement concerning the 
international registration of industrial designs 

{SEC(2005)1749} 

(presented by the Commission) 

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EXPLANATORY MEMORANDUM 

1. 

Introduction 

On  12  December  2001,  the  Council  adopted  Regulation  (EC)  No  6/2002  on  Community 
Designs (hereinafter referred to as “the Community Designs Regulation”).1 

The  Community  Designs  Regulation  establishes  the  Community  design  system,  which 
provides for the acquisition of protection for designs with unitary effect for the whole territory 
of  the  Community.  According  to  the  Regulation,  a  design  may  be  protected  either  by  an 
unregistered Community design, if the design is made available to the public in the manner 
provided for in the Regulation, or by a registered Community design, if registered under the 
procedure provided for in the Regulation. 

The Community Designs Regulation entrusts the Office for the Harmonization in the Internal 
Market  (Trade  Marks  and  Designs),  hereinafter  referred  to  as  “the  Office”,2  to  handle  the 
administration of the Community design. On 1 January 2003, the Office enabled applications 
for registered Community designs with the first date of filing being granted on 1 April 2003.  

On  23  December  2003,  the  1999  Act  of  the  Hague  Agreement  concerning  the  international 
registration of industrial designs, adopted in Geneva on 2 July 1999 (hereinafter referred to as 
“the  Geneva  Act”)  entered  into  force.  The  Geneva  Act  allows  designers  to  obtain  design 
protection  in  a  number  of  countries  through  a  single  international  deposit.  Thus,  under  the 
Geneva Act, a single international application filed with the International Bureau of the World 
Intellectual  Property  Organization  (WIPO)  replaces  a  whole  series  of  applications  which, 
otherwise, should have been effected with different national or regional Offices. 

One of the main innovations of the Geneva Act is that intergovernmental organizations which 
have  a  regional  office  for  the  purpose  of  registering  designs  with  effect  in  the  territory  in 
which  the  constituting  treaty  of  the  organization  applies,  may  accede.  This  innovation  was 
introduced  into  the  Geneva  Act  with  the  specific  intention  of  allowing  the  Community  to 
adhere  to  the  international  registration  system  after  the  entry  into  force  of  the  Community 
design system. 

In order to prepare for the accession of the Community to the Geneva Act, the Commission 
has  elaborated  two  proposals,  which  are  jointly  presented  to  the  Council.  The  first 
Commission proposal relates to the accession of the Community to the Geneva Act.3  

This  second  proposal  contains  the  measures  which  are  necessary  to  give  effect  to  the 
accession of the Community to the Geneva Act. 

2. 

The structure of the Commission proposal 

It  is  proposed  that  the  measures  giving  effect  to  the  accession  of  the  Community  to  the 
Geneva  Act  be  incorporated  in  the  Community  Design  Regulation  through  amendment  of 

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OJ L 3, 5.1.2002, p.1. 
The  OHIM  is  established  by  Council  Regulation  (EC)  No  40/94  of  20  December  1993  on  the 
Community trade mark, OJ L 11, 14.1.1994, p. 1. 
See COM (2005) 

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existing  provisions  and  addition  of  a  new  Title  XIa  on  “International  Registration  of 
Designs”.4 

In  principle,  the  substantive  provisions  applying  to  the  international  registration  designating 
the Community are the same as the provisions which apply to Community designs. 

Thus,  international  registrations  designating  the  European  Community  and  Community 
designs  shall  both  be  subject  to  the  same  law  relating  to  designs  (Title  II),  both  shall  be 
objects of property (Title III), may be subject to an application for a declaration of invalidity 
(Title VI), an appeal shall lie from the decision of the Invalidity Division (Title VII), and the 
jurisdiction and procedures in legal actions relating to Community designs shall be the same 
for  international  registrations  designating  the  European  Community  as  for  Community 
designs (Title IX). 

For these reasons, the new Title XIa contains many cross-references to other Articles of the 
Regulation. 

The inclusion of this new title in the Regulation facilitates access to all the provisions which 
apply to a design protected for the entire territory of the European Community, be it through 
the  registration  of  the  design  as  a  Community  design  or  be  it  through  an  international 
registration of the design designating the European Community under the Geneva Act. 

By  means  of  the  proposed  structure,  implementing  measures,  such  as  laid  down  in 
Commission Regulations (EC) No 2245/20025, No 2246/20026 and No 216/967 will apply in 
principle mutatis mutandis. Where necessary, the Commission will amend them, for instance 
regarding  the  examination  as  to  the  grounds  for  refusal  referred  to  in  Article  106e  of  this 
proposal. 

3. 

The Geneva Act 

The  Geneva  Act  forms  part  of  the  Hague  System,  which  is  based  on  the  Hague  Agreement 
Concerning the International Registration of Industrial Designs. This Agreement is constituted 
by three different Acts: the London Act of 1934, the Hague Act of 1960 and the Geneva Act 
of  1999.  The  three  Acts  are  autonomous  and  coexist  with  respect  to  their  substantive 
provisions. Contracting parties may decide to become party to only one, to two or to all three 
of the Acts. They automatically become member of the Hague Union which at present has 42 
Contracting States, amongst which 12 EU Member States.8  

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A similar structure was followed at the amendment of the Community trademark Regulation in order to 
give  effect  to  the  accession  of  the  European  Community  to  the  Madrid  Protocol  (Council  Regulation 
(EC) No 1992/2003 of 27 October 2003 amending Regulation (EC) No 40/94, OJ L 296, 14.11.2003, 
p.1). 
Commission  Regulation  (EC)  No  2245/2002  of  21  October  2002  implementing  Council  Regulation 
(EC) No 6/2002 on Community designs, OJ L 341, 17.12.2002, p. 28. 
Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for 
Harmonization  in  the  Internal  Market  (Trade  Marks  and  Designs)  in  respect  of  the  registration  of 
Community designs, OJ L 341, 17.12.2002, p. 54. 
Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the 
Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs), 
OJ L 28, 6.2.1996, p. 11. 
Belgium,  Estonia,  France,  Germany,  Greece,  Hungary,  Italy,  Latvia,  Luxembourg,  Netherlands, 
Slovenia,  Spain.  Five  EU  Member  States  –  out  of  18  countries  in  total  -  have  become  party  to  the 

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The  system  of  international  registration  of  designs  arose  from  a  need  for  simplicity  and 
economy.  In  effect,  it  enables  design  owners  originating  from  a  Contracting  State  to  obtain 
protection of their designs with a minimum of formality and expense. 

The international application can be filed in one language (English or French), upon payment 
of  a  single  set  of  fees.  The  applicant  has  to  designate  the  Contracting  States  in  which 
protection is sought. An international application is normally sent directly to the International 
Bureau.  Upon  receipt,  the  International  Bureau  checks  that  the  international  application 
complies  with  the  prescribed  formal  requirements  and  then  publishes  the  application  –  or 
better, the registration - in the International Designs  Bulletin (on WIPO´s internet website). 
Following  publication,  each  national  Office  must  identify  the  international  registrations  in 
which they have been designated, in order to proceed with the substantive examination, if any, 
provided for by its own legislation. 

Any substantive aspect of the protection (including in particular the substantive examination 
carried out by each Office, the assessment of the conditions of protection and the scope of that 
protection) is thus entirely a matter of the legislation of each designated Contracting Party. 

As a result of that examination, the Office may notify to the International Bureau a refusal of 
protection  for  its  territory.  However,  an  international  registration  may  not  be  refused  on 
grounds of non-compliance with formal requirements. Such requirements must be considered 
as already satisfied, following the examination carried out by the International Bureau. 

Once the international application has been accepted it produces the same effect in each of the 
countries  designated  as  if  the  design  had  been  deposited  there  directly.  The  international 
registration is therefore equivalent to a national right in terms of its scope of protection and 
enforcement.  At  the  same  time,  the  international  registration  facilitates  the  maintenance  of 
protection: there is a single application to renew and one simple procedure for recording any 
changes (e.g. in ownership or address).  

The adoption of the Geneva Act in 1999 had a twofold objective, namely: 

•  to make the Hague System more attractive for applicants and to extend the system 
to  new  members;  to  that  end,  the  1999  Act  has  introduced  a  number  of  features 
into  the  Hague  system  with  a  view  to  facilitating  the  accession  to  the  Hague 
Union  of  countries  which  administer  design  examination  systems  (such  as  USA 
and Japan); 

•  to  provide  for  the  establishment  of  a  link  between  the  international  registration 
system  and  regional  systems  by  providing  that  intergovernmental  organizations 
may become a party to the Act. 

The  second  objective  opens  the  door  for  the  accession  of  the  European  Community  to  the 
Hague  System.  The  territory  of  the  EU  would  then  be  regarded  as  a  single  country  for  the 
purposes  of  the  Agreement,  with  the  Community  design  rules  as  the  relevant  domestic 
legislation. The OHIM would become the Office responsible for the substantive examination 
of international applications in which the Community has been designated. 

Geneva Act (Estonia, Hungary, Latvia, Slovenia and Spain). Updates will be published on the WIPO 
website: www.wipo.int.  

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The Geneva Act system became fully operational on 1 April 2004. On that date, the Geneva 
Act  and  the  modernised  Common  Regulations  under  the  Hague  Agreement,  which  simplify 
the entire proceedings, became effective.  

The Community design system and the international registration system as established by the 
Hague Agreement can be considered as being complementary. The Community design system 
provides  for  a  complete  and  unified  regional  designs  registration  system  which  covers  the 
whole territory of the European Union. The Hague Agreement constitutes a treaty centralizing 
the  procedures  for  obtaining  protection  of  designs  in  the  territory  of  the  designated 
Contracting Parties. 

4. 

Legal basis 

Since  the  rules  giving  effect  to  the  accession  of  the  European  Community  to  the  Hague 
Agreement  are  incorporated  in  the  Regulation  through  the  inclusion  of  a  new  and  separate 
Title within that Regulation and an amendment of existing provisions in the Regulation, the 
legal basis for this proposal must be the same as the legal basis of the Regulation, i.e. Article 
308 of the Treaty. 

5. 

The Articles 

Article 1, paragraph 1 

Article  1,  paragraph  1,  modifies  Article  25(1)(d)  by  adding  “or  by  a  design  right  registered 
under  the  Geneva  Act  of  the  Hague  Agreement  concerning  the  international  registration  of 
industrial  designs,  adopted  in  Geneva  on  2  July  1999  (…)  and  which  has  effect  in  the 
Community,  or  by  an  application  for  such  a  right”  as  a  further  earlier  right  available  to  be 
invoked as a ground of invalidity. Such an addition is needed to clarify that an international 
application or registration has the same value as prior design as a design right under national 
or Community design law.  

Article 1, paragraph 2 

The provisions giving effect to the accession of the European Community to the Geneva Act 
shall  be  incorporated  in  the  Community  Designs  Regulation  through  inclusion  of  the  new 
Title XIa on international registration of designs.  

Section 1 – General provisions 

Article 106a (Application of provisions) 

As a general rule, Article 106a of this proposed amendment of the Regulation provides that in 
principle  Council  Regulation  (EC)  No  6/2002  on  Community  designs  and  the  regulations 
implementing that Regulation shall apply to international registrations under the Geneva Act 
designating the Community. 

Moreover,  it  is  clarified  that  the  International  Register  will  take  the  place  of  the  register 
maintained  by  the  Office  where  international  registrations  designating  the  European 
Community  are  concerned.  Any  recording  in  the  International  Register  related  to  an 
international registration designating the European Community shall have the same effects as 
if it had been made in the register maintained by the Office. 

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The  same  reasoning  applies  to  publication:  all  publications  in  relation  to  an  international 
application designating the Community shall be carried out by the  International  Bureau  and 
shall have the same effects as publications by the Office. In addition, the reasoning applies to 
the language regime of Article 98 of the Regulation. 

Section 2 – International Registrations Designating the European Community 

Article 106b (Procedure for filing the international designation) 

Article 4(1)(a) of the Geneva Act states that the international application may be filed, at the 
option of the applicant, either directly with the International Bureau or  trough the Office of 
the applicant’s Contracting party. However, according to Article 4(1)(b) of the Geneva Act, a 
Contracting  Party  may  notify  that  international  applications  may  not  be  filed  through  its 
Office. 

The  Hague  system  draws  most  of  its  advantages  from  its  simplicity  and  the  location  of  the 
receiving office seems to be of minor importance for the application of designs. The European 
Community should therefore exclude the filing of an application through the Office in order 
to avoid useless duplication of work. Direct filing at WIPO is also to be preferred in order to 
avoid  confusion  by  applicants  between  applications  for  registering  Community  designs  and 
applications for international registrations. Such confusion would be all the more problematic 
in case of payment of the basic fee for an international application, which has to be paid in 
any  event  directly  to  the  International  Bureau  and  which  is  payable  at  the  time  of  filing.  If 
applicants would erroneously pay the fee to OHIM, this Office would have to return the fee. It 
is significant that at present WIPO does not receive applications filed through national offices 
even from those Contracting Parties who would permit such a procedure.  

For this reason, the Commission proposes that the Community, in its instrument of accession, 
declares  that  international  applications  may  not  be  filed  through  its  Office.  Accordingly, 
Article  106b  specifies  that  international  applications  pursuant  to  Article  4(1)  of  the  Geneva 
Act indicating the Community shall be filed directly at the International Bureau. 

Article 106c (Designation fees) 

(1) 

The Geneva Act provides in Article 7 that the prescribed fees shall include a standard 
designation fee that has to be paid for each designated Contracting Party. In addition, 
any  Contracting  Party  which  is  an  intergovernmental  organisation  may  declare  that, 
for each application and for each renewal of an international registration in which it is 
designated, the standard designation fee is replaced by an individual designation fee, 
whose  amount  shall  be  indicated  in  the  declaration  and  can  be  changed  in  further 
declarations. The fixed amount  may not be higher than the equivalent of the amount 
which the Contracting Party would be entitled to receive for a national application and 
renewal, that amount being diminished by the savings resulting from the international 
procedure.  

(2) 

The  Commission  proposes  that  the  Community,  in  its  instrument  of  accession, 
declares that the prescribed designation fees referred to in Article 7(1) of the Geneva 
Act  in  relation  to  the  application  and  the  renewal  are  replaced  by  individual 
designation  fees.  These  fees  are  payable  to  the  International  Bureau  and  shall  be 
transferred by the International Bureau to OHIM. 

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(3) 

The Commission will also propose an amendment to Regulation (EC) No 2246/2002 
on  the  fees  payable  by  OHIM,  where  the  amounts  of  the  individual  designation  fees 
will be fixed, in accordance with the requirements of the referred Article 7(2) and Rule 
28 of the Common Regulations.  

Article 106d (Effects of international registration designating the Community) 

Paragraph 1 

Pursuant to Article 48 of the Community Designs Regulation, an application for a registered 
Community  design  shall  be  registered  by  the  Office  as  a  registered  Community  design 
provided the requirements are fulfilled that an application for a registered Community design 
must satisfy and to the extent that the application has not been refused by virtue of Article 47 
of the Community Designs Regulation.  

Pursuant  to  Article  47,  an  application  for  a  registered  Community  design  shall  be  refused 
where  the  Office  notices  grounds  for  non-registrability,  i.e.  where  the  design  for  which 
protection is sought does not correspond to the definition under Article 3(a), or is contrary to 
public policy or accepted principles of morality.  

The provision of Article 106d of this proposed amendment of the Regulation ensures that the 
commencement  of  protection  of  an  international  registration  designating  the  Community  is 
subject to the same conditions as apply to a registered Community design, i.e. an international 
registration designating the European Community shall not have the  effect of a  Community 
design  registration  in  the  territory  of  the  European  Community  before  the  Office  could 
examine the international registration for the grounds of non-registrability. 

Paragraph 2 

Article 106d(2) of this proposed amendment of the Regulation stipulates that where the Office 
does  not  refuse  the  effects  of  an  international  registration  designating  the  European 
Community  in  its  territory  pursuant  to  Article  12(2)  of  the  Geneva  Act,  or  where  any  such 
refusal has been withdrawn, the effects of the international registration shall commence with 
the date of its registration pursuant to Article 10(2) of the Geneva Act and the effects shall be 
the same as the effects of a registered Community design. 

Paragraph 3 

While  there  is  no  need to republish the international  registrations which  are  recorded in the 
International  Register  in  the  Register  of  the  Office,  Article  106d(3)  of  this  proposed 
amendment of the Regulation obliges the Office to provide information about the registrations 
under  the  Geneva  Act  designating  the  European  Community.  This  could  for  instance  be 
effectively  done  by  creating  on  the  OHIM  website  a  hyperlink  to  the  Hague  System.  The 
modalities should be laid down in the Implementing Regulation. 

Article 106e (Grounds for refusal) 

Paragraph 1 

The  grounds  for  refusal  set  forth  in  Article  106e  of  this  proposed  amendment  of  the 
Regulation are identical to the grounds of non-registrability pursuant to Article 47(1), thereby 

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ensuring that an international registration designating the Community is subject to the same 
examination as applications for registered Community designs. 

Paragraph 2 

The provision of Article 106e of this proposed amendment of the Regulation guarantees the 
holder  of  an  international  registration  designating  the  Community  the  right  to  submit 
observations  or  to  renounce  the  international  registration  in  respect  to  the  European 
Community in compliance with Article 12(3)(b) of the Geneva Act.  

The  corresponding  provision  in  Article  47(2)  stipulates  furthermore  that  an  applicant  for  a 
registered  Community  design  shall  be  allowed  an  amendment  of  the  application.  However, 
this further option cannot be applied to an international registration because the grounds for 
refusal  pursuant  to  paragraph  1  may  only  be  overcome  by  an  amendment  of  the  design  in 
question  whereas  the  Geneva  Act  does  not  provide  for  an  amendment  of  the  design  of  an 
international registration after the design has been registered in the International Register. 

The  regular  procedure  would  be  as  follows:  the  Office  will  examine  ex  officio  as  to  the 
grounds  for  refusal.  If  the  Office,  in  carrying  out  this  examination,  notices  a  ground  for 
refusal, it will notify the International Bureau, including the grounds on which the refusal is 
based.  Such  notification  will  be  issued  within  the  six  months  from  the  publication  of  the 
international registration (Rule 18(1) of the Common Regulations). The International Bureau, 
without delay, transmits a copy of the notification of refusal to the holder (Article 12(3) of the 
Geneva  Act).  Within  the  time  limit  specified  by  the  Office  in  the  notification  the  holder  is 
allowed to renounce of the international registration in respect of the Community or to submit 
observations in order to overcome the grounds for refusal. In the course of the examination as 
to  the  grounds  of  refusal  the  holder  and  the  Office  communicate  directly  with  each  other. 
Where the holder overcomes the ground(s) for refusal, the Office shall withdraw the refusal 
and notify the International Bureau accordingly. 

Paragraph 3 

Article 106e(3) specifies that the conditions for the examination as to the grounds for refusal 
shall be laid down in the implementing regulation. 

Article 106f (Invalidation of the effects of an international registration) 

Paragraph 1 

Article 106f of this proposed amendment of the Regulation implements Article 15(1) of the 
Geneva  Act  allowing  for  a  declaration  of  invalidity  of  the  effects  of  an  international 
registration in the territory of the European Community. 

This  provision  ensures  that  a  declaration  of  invalidity  of  the  effects  of  an  international 
registration  in  the  territory  of  the  European  Community  shall  be  subject  to  the  same 
provisions as apply to an application for a declaration of invalidity of a registered Community 
design. Third parties may pursue a declaration of invalidity of the effects of an international 
registration  in  the  Community  either  by  means  of  an  application  submitted  to  the  Office 
according to Article 52 or by a counterclaim before a Community design court according to 
Article 81(d).  

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In  case  of  seeking  invalidation  of  the  effects  before  the  Office,  Titles  VI  and  VII  apply.  In 
particular,  the  holder  may  submit  observations  to  the  application  for  a  declaration  of 
invalidity,  pursuant  to  Article  31  of  the  Implementing  Regulation.  The  final  decision  of  the 
Invalidity Division is subject to appeal (Article 55(1) of the Community Designs Regulation). 

In  this  respect,  Article  15(1)  of  the  Geneva  Act  is  observed.  This  provision  requires  that 
invalidation of the effects of the international registration may not be pronounced without the 
holder having, in good time, been afforded the opportunity of defending his rights. 

Paragraph 2 

Article 15(2) of the Geneva Act requires the Office of the Contracting Party in whose territory 
the  effects  of  the  international  registration  have  been  invalidated,  where  it  is  aware  of  the 
invalidation, to notify it to the International Bureau. This obligation has been copied in Article 
106f(2). It is obvious that the Office will be aware of the invalidity if this is the result of an 
invalidity  procedure  at  the  Office,  or  if  a  Community  design  court  informs  the  Office  on  a 
declaration  of  invalidity,  in  accordance  with  Article  86  (4)  of  the  Community  Designs 
Regulation. 

Article 2 

Article 97 of the Community Designs Regulation specifies that unless otherwise provided in 
the title on supplementary provisions concerning the Office, Title XII of the Regulation on the 
Community trade mark shall apply to the Office with regard to its tasks under this Regulation. 
Title  XII  of  the  Regulation  on  the  Community  trade  mark  includes  Article  134(3)  on  the 
Office´s revenues. This provision has been modified in light of the accession to the Madrid 
Protocol  which  created  a  new  source  of  revenues,  being  the  “total  fees  payable  under  the 
Madrid Protocol referred to in Article 140 of this Regulation for an international registration 
designating the European Communities…”.  

A  similar  modification  of  the  Community  trade  mark  Regulation  is  needed  following  the 
accession  of  the  EC  to  the  Geneva  Act.  The  fees  payable  under  the  Geneva  Act  should  be 
included as a new source of revenues for the Office. 

Article 3 

The Community shall become bound by the Geneva Act three months after that date on which 
its  has  deposited  its  instrument  of  accession  with  the  Director-General  of  the  International 
Bureau. 

In this respect, it should be recalled that Article 2 of the Commission’s proposal for a Council 
Decision  approving  the  accession  of  the  European  Community  to  the  Geneva  Act  to  which 
reference  was  made  earlier  provides  that  following  the  adoption  of  that  decision  by  the 
Council,  the  Council  may  deposit  that  instrument  of  accession  with  the  Director-General  of 
the International Bureau from the date on which the Council adopted the necessary measures 
to give effect to the accession of the Community to the Geneva Act. 

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2005/0274 (CNS) 

Proposal for a 

COUNCIL REGULATION 

amending Regulation (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of 
the European Community to the Geneva Act of the Hague Agreement concerning the 
international registration of industrial designs 

THE COUNCIL OF THE EUROPEAN UNION, 

Having regard to the Treaty establishing the European Community, and in particular Article 
308 thereof, 

Having regard to the proposal from the Commission9, 

Having regard to the opinion of the European Parliament10, 

Having regard to the opinion of the European Economic and Social Committee11, 

Whereas: 

(1) 

(2) 

(3) 

Council  Regulation  (EC)  No  6/2002  of  12  December  2001  on  Community  designs12 
created  the  Community  design  system  whereby  undertakings  can  by  means  of  one 
procedural  system  obtain  Community  designs  to  which  uniform  protection  is  given 
and which produce their effects throughout the entire area of the Community. 

Following  preparations  initiated  and  carried  out  by  the  World  Intellectual  Property 
Organization (WIPO) with the participation of the Member States which are members 
of the Hague Union, the Member States which are not members of the Hague Union 
and the European Community, the Diplomatic Conference, convened for that purpose 
at  Geneva,  adopted  the  Geneva  Act  of  the  Hague  Agreement  concerning  the 
international registration  of  industrial designs (hereinafter referred to as the “Geneva 
Act”) on 2 July 1999. 

The  Council,  by  Council  Decision  [….]  approved  the  accession  of  the  European 
Community to the Geneva Act of the Hague Agreement concerning the international 
registration  of  industrial  designs13  and  authorised  the  President  of  the  Council  to 
deposit  the  instrument  of  accession  with  the  Director-General  of  WIPO  as  from  the 
date on which the Council has adopted the measures which are necessary to give effect 

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OJ C , , p. . 
OJ C , , p. . 
OJ C , , p. . 
OJ L 3, 5.1.2002, p. 1. Regulation as amended by 2003 Act of Accession. 
OJ L , , p. . 

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to the accession of the Community to the Geneva Act. This Regulation contains those 
measures.  

(4) 

(5) 

The  appropriate  measures  should  be  incorporated  in  Regulation  (EC)  No  6/2002 
through the inclusion of a new title on “International registration of designs”.  

The  rules  and  procedures  relating  to  international  registrations  designating  the 
Community should, in principle, be the same as the rules and procedures which apply 
to  Community  designs  applications.  According  to  this  principle,  an  international 
registration designating the Community should be subject to the examination as to the 
grounds  for  non-registrability  before  it  takes  the  same  effect  as  a  registered 
Community design. Likewise, an international registration having the same effect as a 
registered Community design should be subject to the same rules on invalidation as a 
registered Community design. 

(6) 

Regulation (EC) No 2002/6 should therefore be amended accordingly. 

(7) 

The  accession  of  the  Community  to  the  Geneva  Act  will  create  a  new  source  of 
revenues for the Office for the Harmonization in the Internal Market (Trade Marks and 
Designs). Council Regulation (EC) No 40/94 of 20 December 1993 on the Community 
trade mark14 should therefore be amended accordingly.  

HAS ADOPTED THIS REGULATION: 

Article 1 

Regulation (EC) No 6/2002 is amended as follows: 

1. 

Article 25(1)(d) is replaced by the following: 

if  the  Community  design  is  in  conflict  with  a  prior  design  which  has  been  made 
“(d) 
available to the public after the date of filing of the application or, if priority is claimed, the 
date of priority of the Community design, and which is protected from a date prior to the said 
date  

i) by a registered Community design or an application for such a design, or  

ii) by a registered design right of a Member State, or by an application for such a right, or  

iii) by a design right registered under the Geneva Act of the Hague Agreement concerning the 
international registration of industrial designs, adopted in Geneva on 2 July 1999, hereinafter 
referred to as “the Geneva Act”, which was approved by Council Decision [….]15 and which 
has effect in the Community, or by an application for such a right;" 

2. 

The following title is inserted after title XI: 

“TITLE XIa: 

14 

15 

OJ L 11, 14.1.1994, p. 1. Regulation as last amended by Regulation (EC) 422/2004 (OJ L 70, 9.3.2004, 
p. 1). 
OJ L , , p. . 

EN 

11 

   EN 

                                                 
INTERNATIONAL REGISTRATION OF DESIGNS 

SECTION 1 

GENERAL PROVISIONS 

Article 106a 

Application of provisions 

1. 
Unless  otherwise  specified  in  this  title,  this  Regulation  and  any  Regulations 
implementing this Regulation adopted pursuant to Article 109 shall apply, mutatis mutandis, 
to  registrations  in  the  international  register  maintained  by  the  International  Bureau  of  the 
World  Intellectual  Property  Organization  (hereinafter  referred 
to  as  “international 
registration” and  “the  International Bureau”) designating the Community,  under  the Geneva 
Act. 

2. 
Any  recording  of  an  international  registration  designating  the  Community  in  the 
International  Register  shall  have  the  same  effect  as  if  it  had  been  made  in  the  register  of 
Community  designs  of  the  Office,  and  any  publication  of  an  international  registration 
designating  the  Community  in  the  Bulletin  of  the  International  Bureau  shall  have  the  same 
effect as if it had been published in the Community Designs Bulletin. 

INTERNATIONAL REGISTRATIONS DESIGNATING THE COMMUNITY 

SECTION 2 

Article 106b 

Procedure for filing the international application 

International applications pursuant to Article 4(1) of the Geneva Act shall be filed directly at 
the International Bureau. 

Article 106c 

Designation fees 

The prescribed designation fees referred to in Article 7(1) of the Geneva Act are replaced by 
an individual designation fee.  

Article 106d 

Effects of international registration designating the European Community 

An  international  registration  designating  the  Community  shall,  from  the  date  of  its 

1. 
registration, have the same effect as an application for a registered Community design. 

2. 
If  no  refusal  has  been  notified  or  if  any  such  refusal  has  been  withdrawn,  the 
international registration of a design designating the Community shall, from the date referred 
to  in  paragraph  1,  have  the  same  effect  as  the  registration  of  a  design  as  a  registered 
Community design. 

EN 

12 

   EN 

The  Office  shall  provide  information  on  international  registrations  referred  to  in 

3. 
paragraph 2, in accordance with the conditions laid down in the Implementing Regulation. 

Article 106e 

Grounds for refusal 

1. 
The Office shall communicate to the International Bureau a notification of refusal not 
later  than  six  months  from  the  date  of  publication  of  the  international  registration,  if  in 
carrying out an examination of an international registration, the Office notices that the design 
for which protection is sought does not correspond to the definition under Article 3(a), or is 
contrary to public policy or to accepted principles of morality. 

The notification shall state the grounds on which the refusal is based. 

2. 
The refusal of the effects of an international registration in the Community shall not 
become  final  before  the  holder  has  been  allowed  the  opportunity  of  renouncing  the 
international registration in respect of the Community or of submitting observations. 

The conditions for the examination as to the grounds for refusal shall be laid down in 

3. 
the Implementing Regulation. 

Article 106f 

Invalidation of the effects of an international registration 

1. 
The effects of an international registration in the Community may be declared invalid 
partly or in whole in accordance with the procedure in Titles VI and VII or by a Community 
design court on the basis of a counterclaim in infringement proceedings. 

2. 

If the Office is aware of the invalidation, it shall notify it to the International Bureau." 

Article 2 

Article 134(3) of Regulation (EC) No 40/94 is replaced by the following:  

“3. 
Revenue shall comprise, without prejudice to other types of income, total fees payable 
under the fees regulations, total fees payable under the Madrid Protocol referred to in Article 
140 of this Regulation for an international registration designating the European Communities 
and  other  payments  made  to  Contracting  Parties  to  the  Madrid  Protocol,  total  fees  payable 
under  the  Geneva  Act  referred  to  in  Article  106c  of  Regulation  (EC)  No  2002/6  for  an 
international  registration designating  the European  Community and other payments made to 
Contracting Parties to the Geneva Act, and, to the extend necessary, a subsidy entered against 
a specific heading of the general budget of the European Communities, Commission section”. 

This Regulation shall enter into force on the date on which the Geneva Act enters into force 
with respect to the European Community.  

Article 3 

EN 

13 

   EN 

The date of entry into force of this Regulation shall be published in the Official Journal of the 
European Union. 

This Regulation shall be binding in its entirety and directly applicable in all Member States. 

Done at Brussels,  

For the Council 
The President 

EN 

14 

   EN 

 
 
 
 
LEGISLATIVE FINANCIAL STATEMENT 

Policy area: Internal Market for Goods and Services 

Activity: Prepare measures which are necessary to give effect to the access of the European 
Community to the Geneva Act on the international registration of designs 

TITLE OF ACTION: PROPOSAL FOR A COUNCIL REGULATION AMENDING REGULATION (EC) NO 
6/2002  AND  (EC)  NO  40/94  TO  GIVE  EFFECT  TO  THE  ACCESSION  OF  THE  EUROPEAN 
COMMUNITY  TO  THE  GENEVA  ACT  OF  THE  HAGUE  AGREEMENT  CONCERNING  THE 
INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS  

1. 

2. 

BUDGET LINE(S) + HEADING(S) 

OVERALL FIGURES  

2.1. 

Total allocation for action (Part B): € million for commitment 

Not applicable 

2.2. 

Period of application: 

(start and expiry years) 

Start: Date of entry into force 

Expiry: Indefinite 

2.3. 

Overall multiannual estimate of expenditure: 

(a) 

Schedule  of  commitment  appropriations/payment  appropriations 
intervention) (see point 6.1.1) 

(financial 

None 

(b) 

Technical and administrative assistance and support expenditure (see point 6.1.2) 

None 

(c) 

Overall  financial  impact  of  human  resources  and  other  administrative  expenditure 
(see points 7.2 and 7.3) 

€ million (to three decimal places) 

Commitments/ 
payments 

2006 
0.054 

2007 
2008 
0.054  0.054 

2009 
0.054 

2010 
0.054 

2011 
0.054 

Total 
0.324 

EN 

15 

   EN 

 
 
 
 
 
 
 
 
 
 
 
TOTAL a+b+c 

Commitments 

0.054 

0.054 

0.054 

0.054 

0.054 

0.054 

0.324 

Payments 

0.054 

0.054 

0.054 

0.054 

0.054 

0.054 

0.324 

2.4. 

Compatibility with financial programming and financial perspective 

[X]  Proposal is compatible with existing financial programming. 

Proposal  will  entail  reprogramming  of  the  relevant  heading  in  the  financial 
perspective. 

Proposal  may  require  application  of  the  provisions  of  the  Interinstitutional 
Agreement. 

2.5. 

Financial impact on revenue: 

[X]  Proposal  has  no  financial  implications  (involves  technical  aspects  regarding 

implementation of a measure) 

OR 

Proposal has financial impact – the effect on revenue is as follows: 

Not applicable 

3. 

BUDGET CHARACTERISTICS 

Type of expenditure 

New 

EFTA 
contribution 

Contributions 
form applicant 
countries 

Heading in 
financial 
perspective 

Non-comp 

Diff 

NO 

NO 

NO 

No 5 

4. 

LEGAL BASIS  

Articles 308 EC 

5. 

DESCRIPTION AND GROUNDS 

5.1. 

Need for Community intervention  

5.1.1.  Objectives pursued 

The proposal contains the measures which are necessary to give effect to the accession of the 
European  Community  to  the  Geneva  Act.  The  appropriate  measures  should  mainly  be 
incorporated  in  Regulation  (EC)  No  6/2002  through  the  inclusion  of  a  new  title  on 
“International  registration  of  designs”.  The  accession  of  the  Community  to  the  Geneva  Act 
will  create  a  new  source  of  revenues  for  the  Office  for  the  Harmonization  in  the  Internal 
Market (Trade Marks and Designs) - OHIM, and Regulation (EC) No 40/94 should therefore 
be amended accordingly. 

EN 

16 

   EN 

 
 
 
 
 
 
 
 
 
 
 
5.1.2.  Measures taken in connection with ex ante evaluation  

The  European  Community  already  showed  its  great  interest  in  the  Hague  System  when  it 
decided  to  take  an  active  part  in  the  international  negotiations  which  led  to  the  Diplomatic 
Conference  held  in  Geneva  in  1999,  when  the  new  act  was  adopted.  Organizations 
representing  the  potential  users  of  both  the  Community  design  system  and  the  international 
registration  system  repeatedly  expressed  their  strong  interest  in  establishing  a  link  between 
the  two  systems.  In  2004  the  Commission  launched  a  consultation  with  interested  parties 
(Member  States,  business  and  professional  organisations,  and  private  companies)  on  the 
possible  impact  on  business  of  the  accession  of  the  EC  to  the  Hague  System.  An 
overwhelming majority of the responses, bordering on unanimity, supported the idea that the 
Community should accede in the near future to the Geneva Act. 

5.1.3.  Measures taken following ex post evaluation 

Not applicable 

5.2. 

Action envisaged and budget intervention arrangements 

The  rules  and  procedures  relating  to  international  registrations  designating  the  Community 
should,  in  principle,  be  the  same  as  the  rules  and  procedures  which  apply  to  Community 
designs applications. According to this principle, an international registration designating the 
Community  should  be  subject  to  the  examination  as  to  the  grounds  for  non-registrability 
before it takes the same effect as a registered Community design. Likewise, an international 
registration having the same effect as a registered Community design should be subject to the 
same  rules  on  invalidation  as  a  registered  Community  design.  No  financial  assistance  is 
involved. 

5.3.  Methods of implementation 

OHIM will need to adapt its internal procedures and working methods in order to deal with 
the  international  applications  at  the  International  Bureau  of  WIPO  in  which  the  European 
Community is designated in order to obtain protection under the Community design system. 
The  Commission  will  need  to  negotiate  in  the  Hague  Union  Assembly  on  behalf  of  the 
Community  following  coordination  in  the  relevant  Council  working  party  or  at  on-the-spot 
meetings convened in the course of the work within the framework of WIPO. 

6. 

FINANCIAL IMPACT 

6.1. 

Total financial impact on Part B - (over the entire programming period) 

Not applicable 

6.2. 

Calculation  of  costs  by  measure  envisaged  in  Part  B  (over  the  entire 
programming period) 

Not applicable 

EN 

17 

   EN 

7. 

IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE  

7.1. 

Impact on human resources 

Types of post 

Staff to be assigned to management of the 
action using existing and/or additional 
resources 

Number of 
permanent posts 

Number of 
temporary posts 

Total 

Description of tasks deriving from the 
action 

0,5 A 

0 

0,5 A 

If necessary, a fuller description of the 
tasks may be annexed. 

Officials 
temporary staff 

or 

A 

B 

C 

Other human resources  0 

Total 

7.2. 

0,5 

to  negotiate 

Coordination  with  OHIM.  Preparing 
for  and  attending  meetings  of  Council 
the 
and  Parliament 
proposal 
adoption. 
in 
Preparing  for  and  participating 
meetings  of  the  Hague  Union  and 
coordinate  positions  with  the  Member 
States. 

through 

the 

0 

0 

0 

0,5 

Overall financial impact of human resources 

Type of human resources 

Amount (€) 

Method of calculation *  

Officials 

Temporary staff 

Other human resources 

54.000 

Annual costs per official: 108.00 € 

(specify budget line) 

Total  54.000 

The amounts are total expenditure for twelve months. 

7.3. 

Other administrative expenditure deriving from the action 

Not applicable 

The amounts are total expenditure for twelve months. 

1 Specify the type of committee and the group to which it belongs. 

I. 

II. 

Annual total (7.2 + 7.3) 

Duration of action 

III. 

Total cost of action (I x II) 

€54.000 

2006-2011 

€324.000 

EN 

18 

   EN 

 
 
 
 
 
 
 
8. 

FOLLOW-UP AND EVALUATION 

8.1. 

Follow-up arrangements 

Not applicable 

8.2. 

Arrangements and schedule for the planned evaluation 

On-going evaluation will be possible through monitoring the volume of international 
registrations in which the Community design system is designated. 

9. 

ANTI-FRAUD MEASURES 

No financial assistance is involved. 

EN 

19 

   EN