Frequently Asked Questions on International Designs
It is a common misconception that once you have registered a trademark or design right in a single territory (such as the UK or the EU), that this will provide sufficient protection in other countries around the world. This is not the case. If your business is reaching out to a global market, or if you have plans to extend your market into new countries, then you will also need to protect your trademarks and designs in those territories. It is important to consider international registration early. If you leave it too late, you risk losing the right to use your trademark or design in a target territory. This may be because a third party has already registered the same (or a confusingly similar mark) in that area or, in the case of design rights, because you may be time-barred from registering your design if you fail to file an application soon enough after the date of your first territorial registration.
What is an industrial design right?
In the UK an industrial design right is simply referred to as a design right. A design right protects designs applied to industrial objects (i.e. to products capable of being mass produced). It is a right of ownership in the appearance of the whole, or a part of a product (internal or external). Whereas a patent protects the way a product functions or how it is manufactured, a design right protects those elements that make a product (or a part of a product) look unique. The owner of a design right has the exclusive right to reproduce the design for commercial purposes.
Can I register a design internationally?
There is no such thing as an international design right. Industrial design protection is limited to the country or territory in which it has been registered. However, under the Hague Agreement it is possible to register your design in a number of countries through a single application. The Hague Agreement consists of two separate Acts- the Hague Act 1960 and the Geneva Act 1999. Since the EU is party to the Geneva Act, individuals or companies in the EU may use the system to apply to register a design in countries or territories that are members of the Act. Currently there are over 30 members [hyperlink]. It is possible to apply to other territories that are not party to the Act, however this must be done via individual national or regional applications.
What is an international registration?
It is possible to apply for international registration using the Hague system. If you are resident in the EU, or your company trades in the EU, you can apply to several countries at once through a single application process. So long as the countries you have selected are members of the Geneva Act [hyperlink], you are free to select the territories in which you would like your design to be protected. If the application is successful, the owner will end up with a bundle of independent national design rights. Using the Hague system is considerably cheaper and easier than attempting to register your design in each country individually.
If I have registered my design in the UK is it protected in other countries?
Yes. Since the UK is part of the EU, your design will be protected in its 27 member states [hyperlink] as an unregistered design right for 3 years. The level of protection is dramatically lower for an unregistered design than for a registered design [hyperlink]. To maximise your protection within the EU, you should consider applying for a registered Community Design [hyperlink]. Beyond the EU, your design will not be protected. If your market extends to other countries, or if you have plans to branch out in the future, you should consider filing an international application to protect your designs abroad [hyperlink].
What are the requirements for making an international registration?
When your application has been filed with the International Bureau, it will be tested for compliance only on formal requirements (such as the quality of the reproductions of your design; proper payment of fees). It is for the individual countries selected to test your design for originality. The exact nature of this test and how it is applied will vary from territory to territory.
Do I need to have a national or Community design registration before I can make an international registration?
No. The only requirement is that you live within the EU, or that your company is established in the EU.
How should I display my design for the purposes of the application?
The design may be reproduced in the form of photographs or other graphic representations of a professional standard. The photograph may be black and white or in colour. It should be printed (or mounted on) on white paper. A margin of at least 5mm should be left around the representation of the design. Technical drawings are not acceptable. If you only require a part of an object to be protected, you should indicate this with a dotted line. To ensure maximum protection, your design should be represented from all angles necessary.
How long will it take to make an international registration?
It is impossible to give an accurate time period, as the length of time for registration will vary from case to case depending on the countries selected and whether any objections or complications arise. To give some perspective the steps are outlined below: (i) Your application will be submitted to a formal examination by the International Bureau (i.e. assessing the quality of the reproductions of the design; payment of fees). The applicant has a three month period in which any irregularities may be corrected. (ii) If successful, details of the design will be published on the International Register and in the International Designs Bulletin (unless deferment of publication has been requested). This usually occurs 6 months after the filing date. (iii) Your design will then be subjected to substantive examinations in each of the countries selected. The territories have a period of 6-12 months to notify a refusal or acceptance to protect the design. (iv) In the case of refusal, the design owner may contest any such decisions.
How much will an international registration cost?
This will depend on the number of designs you want to register, the number of countries or territories you seek protection in, and which countries or territories you require ( cost varies depending on the individual country or territory). For an assessment as to how much your application will cost, please use our cost calculator [hyperlink].