International design filing strategy (post-Brexit)

This article is intended to help formulate a suitable strategy for pursuing design protection in several countries. It has been written to apply to the situation after Brexit, and is aimed primarily at firms having UK and Europe as significant markets, though the considerations are not limited to such firms.

Unlike patent law and trade mark law, registered design law can vary significantly around the world. The differences primarily relate to:

1. The aesthetic features of an article which can be protected by a registered design;
2. The possibility to pursue design protection for multiple designs in the same application; and
3. The formal requirements for images to be included in the registered design application.

Where a design is the subject of a first registered design application in a first country, there is a risk that it will not be possible to obtain valid registered design protection for the design in a second country based on a priority claim to the first registered design application if the drawings included in the first registered design application do not conform to the requirements in place in the second country. For this reason, it is vital to realistically consider the likely countries of interest for registered design protection in advance of filing the first registered design application.

One suitable strategy is to include multiple different versions of the design drawings as part of multiple related design applications in the first country. Subsequently, a registered design application in the second country can claim priority from the version of the design drawings in the first application that corresponds to the requirements for the second country. This can increase initial costs by necessitating the preparation of multiple different versions of the design drawings on filing. There may also be increased costs associated with the fees for filing multiple related design applications in the first country.

Another strategy is to make use of the grace period, where applicable. This allows the validity of a registered design application to be considered independently of whether the design was previously publicly disclosed by the designer in a fixed period before filing the registered design. In other words, the validity of the registered design application in a second country would not be affected by the previous filing of a registered design application in the first country within the fixed period. The fixed ("grace") period is generally twelve months. The availability of the grace period is significantly restricted in a number of countries, most notable of which is China. Nevertheless, a twelve-month grace period is available in at least UK, the EU and US.

A further suitable strategy is to file an International Design Application under the Hague Agreement. This allows registered design protection in multiple countries to be based on a single application. However, it is still necessary to ensure that the designs take account of the differing design requirements in place in different countries. Whilst there are also additional costs due in respect of additional countries, there is no requirement to appoint local counsel in the countries of interest for the act of filing the design application. In countries where substantive design examination (e.g., where the novelty of the design is examined) is conducted, it may be necessary to appoint local representatives if objections are raised during substantive examination. It is not possible to specify further countries in a Hague Agreement design application after filing, so the countries of interest must be settled at the start. When a Hague Agreement design application is registered (granted), it turns into a bundle of registered design rights in each of the countries specified in the application.

If design protection is ultimately required in the UK and the EU only, a Hague Agreement design may be the best option following Brexit, particularly where design protection is definitely wanted in those territories. This is because EU design applications no longer cover the UK, meaning two separate design rights are required.

We would be happy to discuss your specific commercial circumstances and provide you with tailored advice. Please contact us.