What is design protection?
The specific requirements for design protection and its scope of protection depend on domestic laws and therefore vary across the world. In the EU, for example, it is possible to claim protection for an unregistered design under the condition that the design was first published in the EU . The period of protection is three years from publication and it protects against copying (its scope of protection is therefore more limited compared with registered designs).
In the EU a registered design grants protection for the appearance of a product excluding technical function. Product is generally referred to as covering any handicraft or industrial item but including also graphic symbols and typographic typefaces. The substantive requirements for design protection are that that the design is new and has individual character. Many jurisdictions (including the EU) only make a formal examination of design applications allowing applicants to easily secure protection. However, one needs to bear in mind that a design registration that does not fulfil the substantive requirements can be invalidated by third parties after registration. In the EU, the maximum term of protection for a design is 25 years (subject to renewal every five years).
Different routes to design protection
Today, there are three alternative routes to design protection; namely to file national applications, regional applications (i.e. the EU and OAPI) and International Applications (the Hague System).
Who can use the Hague System?
Not everyone is allowed to use the Hague System. To be able to use the System the applicant must fulfil at least one of the following conditions:
- be a national of a Contracting Party
- have a domicile in a Contracting Party
- have real and effective industrial/commercial establishment in a Contracting Party
- have a habitual residence in a Contracting Party (limited to Parties of the 1999 Act).
International Registration in practice
Main advantages of the Hague System
There are a number of advantages to using the Hague System including:
- Broad geographic scope as 64 Contracting Parties have joined.
- Cost-effective as local representation is not needed for filing or management of the registration.
- Centralised subsequent management as renewals and modifications of the international registration can be done centrally at WIPO.
- Minimum of formal requirements as agreed by the Contracting Parties.
Despite the administrative advantages of systems like The Hague, one needs to bear in mind that design protection across the world is far from harmonised. That is why it is important to know which jurisdictions are of interest before filing. By knowing this, one can adjust one’s application accordingly. In addition, although the Hague System overall is cost-efficient and administratively easy to use, there may be other considerations to take into account. These include limitations relating to the period of deferment of publication. Not all Contracting Parties allow deferment and if at least one of these is designated the International Registration will be published after 6 months . Another issue is entitlement since it is only possible to assign an international registration to someone who is entitled to use the Hague System (see under point 3 above – Who can use the Hague System).
If you have questions or want to discuss your design don’t hesitate to contact our design consultants who aim to create IP values for clients bringing into use the ornamental or aesthetic aspects of products.