Practical routes to UK and EU design registration protection
In the context of obtaining European design registration protection, covering the combination of the EU and the UK, there are a number of different ways in which such protection can achieved.
One way is to pursue “direct” registered design applications before the respective EU and UK design registries (namely the EUIPO and the UKIPO). Another way is to pursue a Hague design registration (at WIPO) which allows both of these territories to be protected through the submission of a single Hague registered design application designating both the EU and the UK.
Deciding on which route to adopt, and also deciding on the order in which any registered design applications should be submitted in instances where separate EU and UK registered design applications are pursued, is not necessarily a straightforward decision. Rather, deciding on the best route forward can depend on a number of strategic considerations.
Primary concern: keeping things under wraps
For those wishing to keep the drawings of the design registration family hidden for as long as possible (using the concept of deferred publication), a more optimum strategy in this respect can be to submit the EU registered design application initially, and then follow up with a UK registered design application six months later. This is because pursuing the registered designs in this order means that the contents of their drawings can collectively be kept unpublished for a total period of 18 months. This would be as opposed to pursuing the UK application first, and then pursuing the EU application six months later, which would mean that the contents of the drawings would only be able to be kept unpublished for a total period of 12 months.
Keeping your registered design portfolio away from prying eyesRead more
Primary concern: there are many drawings in each design, and each design is quite complicated to depict
In this instance, initial consideration might be given to pursuing a Hague design registration (pursued at WIPO). This is because WIPO allows a Hague design registration to contain any number of views, and provides for a description which can be as long as practically needed to allow the design registration to be fully explained.
In contrast, direct EU registered design applications submitted to the EU design registry are limited to a maximum number of seven protected views per design (and up to three unprotected/explanatory views, if required). Similarly, UK registered design applications submitted via the online filing system provided by the UK design registry are limited to a maximum number of 12 views per design, and are also limited in terms of the maximum length of the description (to a mere 240 characters at the time of writing) for each design.
Primary concern: the design registration protection is intending to cover the shape of a product, as well as its surface decoration, individually
In this instance, pursuing direct EU and UK registered design applications has the advantage over a Hague design registration designating the EU and the UK. This is because the former route allows designs directed to the shape of a product, as well as its surface decoration, to all be pursued in a single registered design application in each territory. In contrast, pursuing the Hague route in this instance requires two separate applications - one application for the designs directed to the shape of the product, and a second application for the designs directed to the surface decoration.
Registered designs in the UK and EU: focusing on just the shape? You might be missing out!Read more
Primary concern: pursuing the design registration protection in wider territories around the world
If the ultimate intention is to pursue design registration protection in additional other territories around the world, such as China; Canada; Japan; South Korea; and/or possibly the USA, pursuing the protection in an initial EU registered design application over an initial UK registered design application can be advantageous. This is because the EU design registry, along with the design registries outside Europe as noted above, are all members of the Digital Access System (DAS) system. This thus makes the logistics of pursuing the design registration protection in all these territories that much easier. In contrast, the UK design registry is not yet signed up to this DAS system, which means that pursuing the protection in the UK initially would then necessitate ordering numerous certified copies of the UK registered design application as filed to support all the priority claims for the subsequently pursued design registrations outside of Europe.
WIPO DAS & Designs: EUIPO is an office of second filingRead more
Primary concern: European design registration protection is required, not just protection in the EU and the UK
A number of important territories in Europe are not covered by the combination of direct EU and UK registered design applications, including Switzerland, Norway, and Iceland to name but a few. So if protection in these other, non-EU territories, is of interest, a Hague design registration designating these territories (potentially alongside the EU and the UK as well) may be worth considering as a more cost effective option.
Primary concern: there are many designs to protect, and each design has only a single view (for example, design registrations directed to icons, symbols or GUI designs)
It is to be noted that the official fees for submitting a Hague design registration are more dependent on the number of views that are included in each design. So in instances where the designs in question are single-view only (for example, where they relate to an icon, a graphical symbol, or a GUI screen), it may be more cost effective to obtain design protection in the EU and the UK via the Hague route, as opposed to submitting separate direct EU and UK registered design applications. This is especially so when deferred publication is required (to keep the contents of the drawings from the design registration from publishing too quickly). This is because the Hague route does not incur extra official fees for using deferred publication, whereas direct EU and UK registered design applications do incur extra official fees for using deferred publication.
Primary concern: the resultant design registration protection needs to be enforced quickly
There are sometimes instances when any design registration protection relating to the EU or the UK needs to be obtained quickly, such as for subsequent enforcement purposes. So in these instances, pursuing direct EU and/or UK registered design applications, rather than going down the Hague route, may be preferable in so far as a direct EU and/or UK registered design application can often be obtained much more quickly (sometimes in as little as a few days) than a corresponding Hague design registration designating these territories.
It can be seen that there is no one-size-fits-all approach for obtain registered design protection in both the EU and the UK, and that the most appropriate strategy for doing so will very much depend on the specific facts of the given case.
Nonetheless, by keeping in mind some of the above considerations, this may help in providing an initial steer as to which route, namely either pursuing direct EU and UK registered design applications, or using the Hague system, may be the more effective option for proceeding with.