Designs - Overseas Flashcards
What are the different ways for UK applicant to gain design registration protection?
- Registered Community Design (EU)
- International Registrations under Hague System
- Overseas - national/regional applications filed in a single country/region
- UK Registered Design
Examples of countries that UK Registered Designs extend to
Isle of Man
Falkland Islands
Gibraltar
St Helena
Bermuda
Terminology in relation to designs
UK tend to use design/registered design
WIPO tend to use Industrial design
French and Spanish - ‘dessins et modeles’ etc
US/far east - design patents
Who may apply for design registrations overseas?
Will vary on a country by country basis
Typically individuals, companies, partnerships etc
In some countries it is mandatory to name the designer (can be multiple designers)/in some countries applications filed in name of designer and if there is a corporate owner can file an assignment
Examples of dependent jurisdictions for Designs
Require a registration elsewhere in order to file locally
Channel Islands (jersey, guernsey), Cayman Islands - UK
Eswatini (South Africa)
Need to provide certified copy
Will a local agent be required for filing design registration overseas?
Yes - bc of local laws/legislation, better equipped to deal
May need to be somebody with certain qualifications e.g Patent/TM Attorney (entitled to act before Designs Registry) or just an address for service
How can design rights be protected in countries that have no effective design legislation?
Cautionary Notices - puts third parties on notice of design rights by publishing them in local newspapers
Rarer for designs than TM’s
How are designs classified overseas?
Many countries use International Locarno system
Class 32.00 (for likes of logos) not available in all countries
Other countries do not classify designs or may use archaic system
US for example does not use Locarno, have own classification system, but are typically assigned a Locarno class to aid in searching
Can you claim priority on an overseas design registration?
Yes - convention priority
Filed within 6 months of first filed design application
Important to claim priority for designs - if first filed design has been published, any new applications filed may be invalidated by their effective filing date being after the design has entered public domain
Not all countries have 12 month grace period to file applications like UK and EU (after disclosing)
Details need to be provided of application number, filing date, country of first filing
Some countries might require priority document
How to obtain a certified copy of a UK design application?
(For priority reasons)
Form DF23 - £30
Can you request deferment of publication for overseas designs?
Yes some countries allow but not all
Top end deferment period - 3 years
How does examination work for overseas designs?
Varies by country - have different criteria
Some examine for formalities and technicalities (like UK/EU)
Representations will be checked (e.g views of the design)/some countries more strict, e.g USA
Other countries conduct novelty examination checking against prior art (identical/similar designs)
Can file amendments/arguments in response
How does design registration work for Australia?
Similar process to UK design (i.e only formalities and technicalities examination)
However more extensive examination (known as certification can be requested) after registration (this checks the validity of a design Registration)
It is necessary if you wish to enforce a design (i,e bring about infringement proceedings)
Certification can also be requested by third parties
How does publication/registration work for overseas designs?
Once design is accepted it is published/registered
Some countries will advertise designs for opposition purposes
Some countries have grant fees (registration fees), e.g US - quite expensive
Then certificate of registration issued (translation may be necessary)/check details
How do terms of registration work for overseas designs?
Varying terms
Annuities in China
In some renewal fees, 5 year terms, 10 year terms etc
Maximum duration typically 10-25 years
USA - no maintenance fees, 15 years
What is The Hague System?
Managed by WIPO
allows for an applicant to have their designs protected in several countries by filing one application directly with WIPO
No need for base design/office of origin (so country of origin can be designated and Hague can be a first filing)
Who may apply for Hague system design?
Need to have entitlement
- Be a national of a contracting party member state
- Have a domicile in a contracting party member state
- Have a business in a contracting party member state
- Habitual residence in a contracting party member state (Geneva Act only)
Examples of non-Hague member states
South Africa
Australia
India
New Zealand
What is the county coverage of Hague system?
79 members
Not a unitary right (have to choose)
Can cover the EU
Examples of countries - Canada, Mexico, USA, China, Japan, Vietnam
What languages can a Hague Application be filed in?
English, French, Spanish
Types of designs available under Hague
Multiple designs can be applied for (maximum 100) but must be in same Locarno class
Class 32.00 not always available
Some countries may not accept multiple designs and request they are split
Some countries have requirement for Unity of Design (a group of related designs may be registered if they come from single creative idea), USA, China etc
Which countries require a description of design ?
China, Syria, Vietnam (recommended Russia)
How does classification work for Hague designs?
Locarno class
Can you claim priority on a Hague design?
Yes - 6 month window
DAS code - allows for exchange of necessary documents (i.e priority documents)
Some countries may require certified copies
Can you defer publication on a Hague design?
Possible - max deferment period 30 months
However some countries don’t allow for deferment
Or have other maximum periods (6 months, 12 months, 18 months)
What fees are there for Hague system designs?
Basic fee
Publication fee
Individual fee
OR
Standard fee
How is examination conducted by WIPO for Hague designs?
Examined for formalities (correct fees paid/check classification)
WIPO send out irregularity notice if any issues - responses direct to WIPO
if fine - registration certificate issued and design published in International Designs Bulletin
Around same time WIPO forwards details of mark to relevant IP offices - notification date - for countries to examine locally
How is examination conducted by relevant IPO’s?
Objections must be issued within 6 months, or for some countries 12 months
Provisional refusals issued in English, French or Spanish and communicated to WIPO who will pass this on to applicant/representative
Responses made to IPO concerned
once objections overcome/no objections made, after 12 months - registration is assumed - statements of grant may be issued
Which countries have second part individual fees for Hague designs?
Mexico USA
Payable once their office considers a design qualified for registration
Paid through WIPO
How does renewal work for Hague designs?
5 years from application/registration date
Renewable for 5 year periods
Filed through WIPO centrally
Maximum terms for most countries under Geneva Convention - 15-25 years
Can you have subsequent designations for Hague designs?
No
But could file separate applications either
1. At same time (or within priority)
2. Before publication / disclosure
3. Filed within grace period for disclosure
Differences between Hague and Madrid
- No base application/registration for Hague, or office of origin
- Can designate home jurisdiction
- Don’t have to worry about dependency or central attack
- Can’t file subsequent designations
- Design law less harmonized compared to TM’s
