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International Design Registration: Not Just for Patent Lawyers

June 25, 2015

International Design Registration: Not Just for Patent Lawyers

June 25, 2015

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On May 13, 2015, the United States and Japan became members of the Hague System for the International Registration of Industrial Designs, administered by the World Intellectual Property Organization (WIPO) through its International Bureau (IB). The Hague System allows eligible applicants to register up to 100 2-dimensional and 3-dimensional designs in a single standardized application. The application is filed and prosecuted in the single language (English, French or Spanish) with payment of a single fee to the IB. Eligible applicants include nationals of a member state that is either a Contracting Party or a State member of an intergovernmental organization that is a Contracting Party, or that has a domicile, residence or a real and effective industrial or commercial establishment in a Contracting State.

Applications can be filed directly with the IB, or through the Office of the applicant’s Contracting Party (where available). For U.S. nationals, an International Design Application (IDA) application can be filed indirectly through the USPTO. Alternatively, the IDA can be filed with the International Bureau, but only after a U.S. foreign filing license is obtained.

Trademark practitioners should be aware that the Hague System for International Registration of Industrial Designs also permits registration of two-dimensional (“2-D”) designs, and can be an effective tool in the protection of trademarks, and especially trade dress, brands, and logos. For example, a program for protection of trade dress against copyists could include registration of up to 100 different variations of important trade dress in a single application for international design registration.

Each application is examined by the IB, but only as to form. Once the application is found to be, or is placed, in good order, the application is accepted, and it is then published and transmitted to each member Contracting Party and intergovernmental organization designated in the application. In those Contracting Parties and intergovernmental organizations that have designated themselves at “Level One”, a registration is issued promptly without further action. In Level 2 countries, a further search and examination is conducted, but not to the point of novelty. In Level Three countries, including the United States, a full search and examination, including for novelty, is conducted; however, only the International Bureau is permitted to examine the application for form.

All fees, including designation fees, are paid to the International Bureau at the time of filing. Designation fees are then distributed to the individual states when the published application is communicated to the individual offices. In most countries, registration is for three, five year terms, with a single renewal request covering all states filed directly with the International Bureau. Title documents (e.g., assignments, changes of name) are also accepted and recorded by the IB in response to a single unified request.

It should be noted that the U.S. has taken certain exceptions to the requirements of the Hague System. For example, U.S. registrations are granted for a single 15 year term. Also, U.S. applications can include only a single design. Where the IDA communicated by the IB includes multiple designs, the applicant must elect a single design for examination of that application in the U.S. Non-elected designs can be protected in separate divisional applications. In contrast, the U.S. has adopted the Hague System requirements for drawings (“reproductions”) in “whole cloth”, as new rule 37 CFR 1.1026 specifies: “Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.” These requirements are complex, and differ in many respects from U.S. design patent requirements, so attention must be given to preparation of drawings early, well in advance of the filing deadline.

Catch the replay of our recent webinar, “Understanding the New International Design Registration (IDR) System,” here.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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