IP-Fälle und Artikel

Design registrations via the Hague system: Guernsey quietly makes a welcome entrance

With respect to the international Hague design registration system, proposed law changes by The Bailiwick of Guernsey will soon mean that future Hague design registrations, which designate the UK, will additionally be extended to cover Guernsey free of charge, and without the need for any separate re-registration before the Guernsey design registry.

Specifically, once the above change in the law has been finally effected, which at the time of writing is currently advertised for implementation as 23 March 2021, any future design registration protection obtained in Guernsey via the Hague system will be preserved for as long as the UK designation of the Hague design registration is maintained, and kept in force.

For completeness, it is understood that the above change in design law for Guernsey will only be afforded to future UK design registrations obtained via the Hague system, and not to UK design registrations applied for via the UK Intellectual Property Office (UKIPO) directly. Thus for these latter design registrations covering the UK, registered design protection in Guernsey will only be possible via re-registering the UK design registration before the Guernsey design registry, along with paying the necessary re-registration fees in respect of the same.

The proposed change in the design law of Guernsey will no doubt be of welcome news to many, and provides another glowing reminder of the potential power of the Hague system in being able to offer truly international design registration protection across many territories of the world.

Guernsey aside, for those seeking design registration protection in the UK more generally, careful thought should still be given as to whether such protection might be best obtained through the Hague system, or by way of a separate UK registered design application made to the UKIPO. Indeed, the latter route via the UKIPO still has its own notable advantages over the Hague system.

In the above respect, a design registration application made to the UKIPO directly can often be pushed through to registration much more quickly (that is, in a mere matter of days) compared with a Hague design application designating the UK alongside other territories.

Crucially as well, a single UK registered design application made via the UKIPO can cover multiple designs relating to any combination of subject matters, and which are not necessarily all in the same main Locarno Classification heading (these headings ranging from 01-32). In contrast, a Hague design registration designating the UK can only relate to multiple designs in so far as the subject matter of all of these multiple designs falls under the same main Locarno Classification heading.

In summary therefore, for those seeking registered design protection in the UK, careful consideration should be given as to which route may be the most effective depending on the circumstances of the case.

For a better understanding as to which route may be most appropriate to your given circumstances, please do not hesitate to contact one of the members of our design team who would be pleased to advise.

WIPO information notice

Hague System – United Kingdom Extends Ratification of the 1999 Geneva Act to Guernsey.

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