GovWire

Introduction

Registering your design in the UK does not protect it abroad.

If you want to register your design in countries other than the UK, there are a number of ways in which you can do so.

• you can apply for a Registered Community Design (RCD) covering the whole of the European Union (EU)

• you can use the Hague System to apply to a number of different countries or territories at the same time, through a single application

• you can apply directly to most major countries of the world by making a separate application to each country in which you want protection

Claiming a priority date

You may be able to claim a priority date if you apply for design protection in another country, within 6 months of applying for the same design in the UK.

Priority dates are only granted in countries which have signed the Paris Convention or are members of the World Trade Organisation.

European design protection

If you want design protection in countries which are members of the EU, you can apply for a RCD through the European Union Intellectual Property Office (EUIPO), based in Alicante, Spain.

Anyone can apply for a registered community design.

International design protection

The Hague System for the International Registration of Industrial Designs allows you to simultaneously apply for a design in many different countries or territories, through a single application to the World Intellectual Property Organisation.

An international application does not have to be based on an existing design application, or registration; it is however possible to claim priority from an earlier application filed at a national office.

Cost

The cost to apply depends on which and how many countries you want your design to be protected in. If you designate the UK as one of your countries you will need to pay the following fees in addition to the standard WIPO application fee of 397 CHF.

Cost of UK designation will be;

• 42 CHF for the first design,

• 2 CHF for each additional design in same Locarno class (Level 1 fees)

For renewal of an International Design you will pay the basic fee of 200CHF plus additional fees as follows;

• first design 21 CHF

• each additional designs 1 CHF

There is a full list of fees together with a fee calculator on the WIPO website.

For further details on International Design protection please go to visit the WIPO website.

If you need any help with fees, please contact WIPO:-

Tel. +41 (0) 22 338 7575
Fax. +41 (0) 22 740 1429

Contact Hague:

• opening hours: 09:00 - 18:00 (CET)

Payments must be made in Swiss francs (CHF) to WIPO in Geneva. The WIPO E-Payment service should be used when in receipt of a WIPO reference.

How to apply for an International Design

For details on how to apply.

Your application will be examined by WIPO to check formal requirements are met and you will be notified of any irregularities. When this has been done, WIPO will forward your application to the national IP office of the countries you have designated. They will decide if your design is acceptable for registration in their territory.

For further information regarding your case after it has been received at WIPO and to monitor its current status, information can be found using International Design Bulletin.

Note that designations of the United Kingdom in international applications filed on or after January 1, 2021 will automatically be afforded protection in the Bailiwick of Guernsey without any need for applicants to re-register their UK design.

If your International Design is attacked

Your design may be invalidated in any of the designated countries, but if successful, this will only affect the international registration in that country.

If someone invalidates your design and you withdraw or lose your challenge to an invalidation, you may have to pay towards the other persons costs.

Any costs incurred are set according to the law of the National Offices in the designated countries.You may wish to seek professional advice if your international application is invalidated.

For specific legal advice please see Seeking intellectual property advice.

Using unregistered design rights

You may also be able to rely on automatic copyright and unregistered design protection in the countries concerned, for example the Unregistered Community Design which covers the whole of the EU.