Brexit, Designs and the Hague Agreement

The UK Intellectual Property Office (IPO) has released its first official statement on the potential effects of Brexit (the UK’s decision to leave the European Union) on IP. The official guidance covers patents, trade marks and copyright, but one area of particular interest relates to designs.

At present, UK-based applicants are able to register designs nationally in the UK, throughout the EU by way of the Community design registration system, and internationally by way of an application under the Hague Agreement. The Hague Agreement allows applicants based in one so-called ‘Contracting Party’ to the Agreement to seek design protection in one or more other Contracting Parties at one time.

UK applicants are currently only entitled to make applications under the Hague Agreement by virtue of the UK’s membership of the EU. This is because the UK is not itself a Contracting Party to the Agreement. It has therefore been uncertain whether UK citizens would continue to have the right to file Hague applications post-Brexit.

However, in this new guidance, the IPO has confirmed that the UK government has made clear its intention to ratify the Hague Agreement in a national capacity. Consequently, the IPO is working through the steps of joining the Hague system and hopes to introduce the service within the next year. UK citizens will therefore retain their right to seek registered design protection abroad through this simplified system.

This is good news for applicants because the Hague system allows design protection to be sought into up to 65 territories (including EU countries, the US, Japan and South Korea) through one single application. In addition, a single Hague application may be used to protect up to 100 designs for similar types of products. This can significantly reduce the initial filing fees associated with registering a design in multiple countries simultaneously when compared with the alternative of filing multiple individual national design applications. A granted international design registration is also renewed centrally, rather than in each designated state, which further reduces costs where multiple countries are designated.

The main downside of an international registration under the Hague Agreement is that not all commercially important territories are currently covered (Australia, Canada and China are notable exceptions). There can also be some complexity involved with planning an application to ensure that the resultant registration is enforceable in each designated territory.

Nevertheless, with the government’s confirmed intention to join the Hague system independently of the EU, it is likely that increasing numbers of UK applicants will choose to take advantage of the system.