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CITMA Paralegal Course > Designs - Overseas > Flashcards

Designs - Overseas Flashcards

1
Q

What are the different ways for UK applicant to gain design registration protection?

A
  1. Registered Community Design (EU)
  2. International Registrations under Hague System
  3. Overseas - national/regional applications filed in a single country/region
  4. UK Registered Design
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2
Q

Examples of countries that UK Registered Designs extend to

A

Isle of Man
Falkland Islands
Gibraltar
St Helena
Bermuda

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3
Q

Terminology in relation to designs

A

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

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4
Q

Who may apply for design registrations overseas?

A

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

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5
Q

Examples of dependent jurisdictions for Designs

A

Require a registration elsewhere in order to file locally

Channel Islands (jersey, guernsey), Cayman Islands - UK
Eswatini (South Africa)

Need to provide certified copy

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6
Q

Will a local agent be required for filing design registration overseas?

A

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

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7
Q

How can design rights be protected in countries that have no effective design legislation?

A

Cautionary Notices - puts third parties on notice of design rights by publishing them in local newspapers

Rarer for designs than TM’s

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8
Q

How are designs classified overseas?

A

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

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9
Q

Can you claim priority on an overseas design registration?

A

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

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10
Q

How to obtain a certified copy of a UK design application?

(For priority reasons)

A

Form DF23 - £30

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11
Q

Can you request deferment of publication for overseas designs?

A

Yes some countries allow but not all

Top end deferment period - 3 years

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12
Q

How does examination work for overseas designs?

A

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

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13
Q

How does design registration work for Australia?

A

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

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14
Q

How does publication/registration work for overseas designs?

A

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

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15
Q

How do terms of registration work for overseas designs?

A

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

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16
Q

What is The Hague System?

A

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)

17
Q

Who may apply for Hague system design?

A

Need to have entitlement

  1. Be a national of a contracting party member state
  2. Have a domicile in a contracting party member state
  3. Have a business in a contracting party member state
  4. Habitual residence in a contracting party member state (Geneva Act only)
18
Q

Examples of non-Hague member states

A

South Africa
Australia
India
New Zealand

19
Q

What is the county coverage of Hague system?

A

79 members

Not a unitary right (have to choose)

Can cover the EU

Examples of countries - Canada, Mexico, USA, China, Japan, Vietnam

20
Q

What languages can a Hague Application be filed in?

A

English, French, Spanish

21
Q

Types of designs available under Hague

A

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

22
Q

Which countries require a description of design ?

A

China, Syria, Vietnam (recommended Russia)

23
Q

How does classification work for Hague designs?

A

Locarno class

24
Q

Can you claim priority on a Hague design?

A

Yes - 6 month window

DAS code - allows for exchange of necessary documents (i.e priority documents)

Some countries may require certified copies

25
Q

Can you defer publication on a Hague design?

A

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)

26
Q

What fees are there for Hague system designs?

A

Basic fee
Publication fee
Individual fee
OR
Standard fee

27
Q

How is examination conducted by WIPO for Hague designs?

A

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

28
Q

How is examination conducted by relevant IPO’s?

A

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

29
Q

Which countries have second part individual fees for Hague designs?

A

Mexico USA

Payable once their office considers a design qualified for registration

Paid through WIPO

30
Q

How does renewal work for Hague designs?

A

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

31
Q

Can you have subsequent designations for Hague designs?

A

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

32
Q

Differences between Hague and Madrid

A
  1. No base application/registration for Hague, or office of origin
  2. Can designate home jurisdiction
  3. Don’t have to worry about dependency or central attack
  4. Can’t file subsequent designations
  5. Design law less harmonized compared to TM’s

CITMA Paralegal Course (23 decks)

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