You’ve created a great-looking new product and you hope it’ll be popular around the world.
As with other intellectual property (IP) rights, design protection is territorial. Deciding where to apply for design protection is a balance between cost and coverage. It can become very expensive to seek protection worldwide, so we’ve put together our suggestions to reduce the cost of design protection.
Consider registering your design only in the countries you’re planning on selling your product, or if that doesn’t help narrow down the geographical coverage then pick say, your top three markets. You might also want to add to this the countries where your product is manufactured – stopping competitors at source is always best.
Now you know the countries you want protection within, let’s consider how you go about getting the protection you desire. The good news is that you don’t have to file in all countries at the same time. There’s a system in place that not only delays the cost of filing in multiple countries, but also delays when you really need to make that final decision about where you want protection.
The first step always involves filing a first application in one country of interest, for example in the UK. You then have 6 months to file design applications in other countries which ‘claim priority’ from the UK application. This means that the originality of the design will be assessed based on the date of the first application, not the date of filing the subsequent applications in other countries.
When it comes to filing your designs, there are multinational agreements that you can take advantage of to make life simpler. These systems will allow one design application to cover all the member countries at the same time, which will usually save money compared to applying in each of the countries individually.
One of these is the Registered Community Design which is a single design that covers the whole European Union. More information can be found here.
Another is the Hague System which covers over 60 countries including the US, Japan and Europe. More information can be found here.
To obtain registered design protection, most countries require that the design is new. However, you may want to put your product on sale to gauge interest before incurring the cost of a design application.
Thankfully, some countries, including the US and Europe, offer a 12 month ‘grace period’ to file your application after you first publicly display your product, and still obtain registered design protection.
Whilst this can save upfront costs, it’s still best to file for design protection as soon as possible, and not wait until the end of the 12 month grace period. Also, be aware that the same principles do not apply for patents, so if you think a part of your product is potentially patentable it is always best to seek patent protection before any launch.
If it’s been longer than 12 months since you first started selling your product but you haven’t yet applied for design protection, all is not lost.
In Europe, you get automatic unregistered design rights against direct copying of your design. These unregistered rights don’t last as long – three years compared to the 25 years that a registered designs can last for. It’s also harder to prove copying of an unregistered designs compared to a registered design, but unregistered rights are always worth keeping in your back pocket.
Answer last updated: 17 Jan 2018Tags: