Obtaining Registered Design Rights in Japan and the US is now Easier
April 13, 2015
Japan and the US have enacted respective national provisions to become members of the Hague Agreement which is an international, multi-jurisdiction system for the protection of registered design rights. Their membership is expected to come in to force in May 2015 and will make it easier for UK and EU applicants to obtain registered design protection in Japan and the US.
A design may be protected by both unregistered and registered design rights. In the UK, unregistered design rights exist automatically upon creation of a design and generally last for 10 years from first marketing of the design. In the EU, an unregistered design right is created when the design is made available to the public within the EU, but only lasts for 3 years. Unregistered design rights are not monopoly rights and only protect a design if actual copying of the design can be proved.
In contrast, registered designs rights are monopoly rights in that a registered design need not have been copied for the design right to have been infringed and thus for infringement there is no need to prove that a registered design was copied. Accordingly, it is generally easier to enforce registered designs. Also UK and EU registered designs can provide longer term protection, having a maximum duration of up to 25 years. Registered design rights are obtained through what is generally a quite straightforward registration system.
The Hague system for registered designs allows an applicant to file a single application to register up to 100 designs in multiple designated countries and is available to applicants who are domiciled, resident or who have a real and effective industrial or commercial establishment in one of the 62 contracting states.
As the European Union is a member of the Hague Agreement, UK and European designers are able to file an application for international design registration in any of the 62 member states. The UK is not currently a member of the Hague Agreement. However, if the European Union is designated in an international design application, protection will automatically cover all 28 EU member states, including the UK. Therefore, applicants wishing to protect their designs in the UK using the international Hague system must do so by filing an international design application designating the EU.
The membership of Japan and the US will bring the total number of Hague Agreement member states from 62 to 64 and will enable eligible applicants for the first time to gain registered design protection in the key industrial markets of Japan and the US, two of the world’s largest economies, through an international design application, rather than by filing single, national design applications in each country.
Designers in the UK, EU and other member states will therefore be able to protect their designs internationally with greater ease as individual, national design applications will no longer have to be filed in Japan and the US, which may instead be covered by a single international application using the Hague System. Designers in Japan and the US will also have easier access to international registered design protection through the Hague System.
Obtaining design registration through the international Hague system is generally significantly cheaper than filing separate national or regional applications, and an international design application can be registered relatively quickly. There is, however, a possibility that the countries designated may raise objections to the international application based on their respective national laws. This unfortunately, at least in the US, is likely to happen in many cases.
The Hague system also removes the complication of having multiple translation requirements, fees, deadlines and renewals. In summary, the Hague system is a relatively quick, inexpensive way of obtaining registered protection for industrial designs in a large number of countries.
The announcement from the World Intellectual Property Organization concerning the membership of Japan and the US can be found here
If you have any questions concerning this change in law, or would like more information on applying for international design protection, please get in touch with your usual contact at Swindell & Pearson Ltd or Natalie Dyer at [email protected]. Natalie is based in the East Midlands, at our head office in Derby.