Protecting Registered Designs globally
Registered Designs are not protected around the world in the same volumes as trade marks. Whereas trade marks do not have any novelty requirements that preclude them being filed years after an original application – so trade mark applications can be staggered for when you become ready to launch a brand in a particular country – this is not the case with designs.
Timelines can vary but it is often necessary to file registered design applications within one year of a design being disclosed e.g. first put to market or filed in a registered design application. After this and any earlier disclosure will be considered novelty destroying making any registered design obtained invalid. It should also be noted that while the EU and US have this one year “grace period”, this is shorter or not available in some countries.
Patents also have novelty requirements but the Patent Cooperation Treaty (PCT) smooths the process for international protection.
For Registered Designs, it is not as easy to protect them internationally. Typically, it is necessary to file national applications, which administratively are more burdensome and can be expensive, particularly if you want to get protection in a number of countries.
This article will explore some of the ways – new and old – of protecting Registered Designs globally more easily.
This is to Registered Designs what the Madrid System is to trade marks. Its coverage is, unfortunately, not as comprehensive as the Madrid System. In the grand scale of things, the number of applications through the Hague System is quite low.
Membership is nonetheless growing with new members this year including Mexico, Israel, and Samoa. It’s a mix of members includes important countries to many businesses (like Canada, Japan, Korea, Russia, the United States and Vietnam) to some smaller ones not in the plans of many businesses.
A single application can be filed direct with WIPO to get design protection across a range of (member) countries. Like with Madrid, each country then examines the design filed in accordance with their local laws.
Using the Hague System is not entirely straightforward because Registered Design law and practice around the world still have some differences. These can be formal. For example, for some countries it is necessary to submit a description of the design. Failure to do this may result in a Provisional Refusal from a designated country; but you may wish to avoid entering a description in case it affects the scope of protection for another designated country.
The desirability of using the Hague System for “substantively examining” countries is also questionable. These countries include Japan, Korea, Russia and the USA where examination is in far more detail and examiners will check the existing design corpus. Refusals from these countries are therefore common.
Filing nationally in these countries may help avoid refusals and problems that may be more difficult to fix under the Hague System. It’s a balancing act of when using Hague is appropriate.
Registered Community Designs
Registered Community Designs (RCDs) cover all the member states of the European Union. They have proved immensely popular with the Register being one of the biggest for design registrations in the world (albeit still massively behind China).
It is a highly cost-effective system. If you have a number of designs then it may be possible to combine them in a multiple application (criteria apply) that reduces the fee due for each additional design.
Substantive examination is not carried out enabling registration to be granted quickly. It is a system that means the validity of a design is usually only challenged in the event the owner tries to enforce it.
Other multiple country systems
Alongside the RCD procedure, there are other Registered Designs systems covering more than a single country.
A Benelux registration covers Belgium, the Netherlands and Luxembourg (these countries can also be covered by an RCD).
An OAPI registration covers 16 mainly Francophone countries in Africa: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, the Comoros, the Congo, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo.
In an ARIPO application, you have to specifically choose the countries you want to cover from Botswana, Eswatini, the Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Tanzania, Uganda, Zambia and Zimbabwe. There are some questions regarding this system in terms of implementation into national laws and the term of protection that make the ARIPO system far from perfect and these should be considered before making use of the regime.
A far older way of protecting designs to many, albeit generally small, corners of the world is through a United Kingdom Registered Design. These cover some territories automatically through old legislation still in force in the likes of Eswatini, Fiji and Gibraltar. You can also “extend” a UK Registered Design to Jersey and Guernsey.
WIPO Digital Access Service (DAS)
This is a service offered by WIPO that allows for priority documents and similar documents to be securely exchanged electronically.
Priority can be important for Registered Designs as it can avoid later applications for a design lacking novelty. However, obtaining and providing priority documents (often in the form of paper certified copies) can be cumbersome. It can also be slow waiting for an IPO to issue the document. You may have to pay a fee to the IPO and, where a physical document is required, you will then have postal/courier expenses in sending to the country where it needs to be filed. You may also need to obtain multiple documents in case of a large worldwide filing programme.
The DAS enables you to simply ask the IPO of first filing to add the priority document into the system and you are provided with a code that can be shared with other IPOs.
For those of us in Europe where our first filing is often an RCD application, we will be pleased to note that the EUIPO joined DAS from 11 July 2020, albeit at this stage only as a depositing office and not an accessing office.
When filing an RCD, it will be possible to tick a box on the e-filing form to obtain a code for sharing with other IPOs. Currently, there are 12 accessing offices for Registered Designs (Australia, Canada, Chile, China, Georgia, India, Israel, Japan, Norway, Korea, Spain and the USA) and it can be used for Hague designs too. Helpfully, this box is ticked by default when filing an RCD application.
This represents a fantastic time and cost saver when dealing with priority applications and it is expected this service will expand. The EUIPO is expected to become an accessing office by the end of the year.
Challenges remain. With trade marks, although law and practice can differ around the world, the formalities associated with trade mark applications are not markedly different globally. When it comes to Registered Designs there is less harmonisation or uniformity. For example, and even though the UK, EU and other EU member states are harmonised in their approach with Registered Designs, in the UK it’s not necessary to mention Locarno classes when filing, but these are fundamental to EU applications.
You may see Registered Designs under alternative names such as Industrial Designs, Design Patents or Drawings & Models, which perhaps also demonstrates different approaches around the world.
However, you will see that should you be interested in protecting Registered Designs at more global levels that there are some ways to help make this process less cumbersome and less expensive. Giving some thought to using a mixture of national, regional and international applications ahead of making the filings is also a wise consideration. In the world of IP, a one-size-fits-all approach is rarely, if ever, appropriate.