Streamlined global design rights protection becoming a reality

Posted on 10 Jun 2015 by Tim Brown

A streamlined system for protecting industrial designs globally has been bolstered by the addition of two major markets – the US and Japan, according to intellectual property firm Withers & Rogers.

With effect from 13 May 2015, the US and Japan have become official members of the Hague system, which allows companies to protect their industrial designs in multiple countries simultaneously and cost-effectively.

It has taken several years for these countries to align their domestic laws with the international system for design rights protection and the move is expected to be popular among international businesses around the world, not only those in the US and Japan.

One of the main benefits of the Hague System is that it reduces complexity by removing the need to file and track individual design rights applications in many different countries. Registered designs, also known as design patents, can be used to protect the shape and appearance of a product to prevent third parties from using it without their permission.

Richard Worthington, patent attorney and head of designs at Withers & Rogers, said: “The World Intellectual Property Organisation (WIPO) recently reported a 10% annual rise in the number of Hague design filings as companies are recognising the commercial value of protecting their industrial designs globally.

With the US and Japan now signed up, the Hague System is bound to become even more popular in the future.”

The Hague System is particularly popular in the fast-moving consumer electronics and automotive sectors, with manufacturers capitalising on the convenience of the process. However, when filing for design rights protection using the Hague System, companies still need to consider the differing laws of individual jurisdictions.

For example, while the Hague System was originally set up as a registration system, the US as well as Korea and Japan, carry out further checks under so-called ‘substantive examination’. This means an application can be objected to in those countries if it fails to comply with local laws.

Worthington explained: “There are still important differences that users of the system need to bear in mind. In some jurisdictions, such as the EU, only one view of the design is required. However, the US and Japan will still insist that there are a sufficient number of views from different angles to fully illustrate the appearance of the design.”

Different countries have historically offered design rights protection for varying time periods too. Up until now in the US for example, design rights were protected for fourteen years. Under the Hague system, protection is granted in five-year instalments so US design patents will now have a term of fifteen years.

Worthington continued: “US laws had to be ‘harmonised’ to match the Hague System’s period of protection before it could become an official member state. With Russia and China likely to follow in the footsteps of the US and Japan, efforts to synchronise domestic design rights terms and requirements are set to continue.

“Those countries that have a simple registration system are easier to incorporate than those that perform more detailed examinations of design rights applications. Such examinations often relate to the novelty and non-obviousness of a design or partial design.”