21 October 2015

UK Registered Designs - online filing for all filing routes - and other bits

The Intellectual Property Office in the United Kingdom recently introduced an online tool for the filing of UK national registered design applications.

I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.

Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:

1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union

What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.

There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).

Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.

The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.

I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).

This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.

Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.