July 11, 2022

Design renewal

Industrial design protection is widely utilised across the globe, with a registered design right preventing others from appropriating or imitating the appearance of a product. However, the obtainment of a design right, alongside a certificate of registration, is often not the final step of design protection.

Once granted, it is important to ensure that a design right is maintained in each jurisdiction in which the owner utilises the design. In order to uphold and maintain such rights, many countries require the filing of a request for design renewal and the payment of annuity/renewal fees.

The renewal process varies between countries and even between regional IP systems. As an example, some of the largest IP offices worldwide include the US, South Korea and China, and they all have different procedures in relation to the renewal of design rights and annuities.

In South Korea, for example, the validity term for an industrial design right consists of 20 years counted from the date of filing. The legislation in the country outlines that once the right has been granted, the registration fee for an industrial design should be paid within 3 months from receipt of the Notice of Allowance.

The registration fee in South Korea is inclusive of the payment for the first 3 years of the design right lifecycle, meaning that further annuity payments should be made in respect of the 4th years onwards. The payment of each annuity fee thereafter is due prior to the anniversary of the registration date for each respective year.

Whilst it is recommended that the payment of an annuity fee is made within the prescribed time, a grace period of 6 months exists in South Korea, allowing for the late payment of said fee when accompanied by payment of a surcharge.

In China, industrial designs with a filing date on or after June 1, 2021 are in force for 15 years from the date of filing, whilst those with a filing date occurring on or before May 31, 2021 are in force for 10 years from the date of filing.

Once granted, the official grant fee should be paid within two months from the date of receipt of the notification to grant a certificate, however, unlike South Korea, this fee is not inclusive of the first annuity. Instead, the first renewal payment, as well as a stamp tax for the design certificate in China, are to be paid separately upon registration of a design.

Further annual fees are to be paid in advance, during the month preceding the anniversary of the filing date. Late payment is possible within a six-month grace period by paying a corresponding surcharge.

In the US, design patents with an application filing date occurring on or after May 13, 2015 are valid for 15 years from the date of issuance, whilst those filed prior to May 13, 2015 have a term of 14 years from the date of issuance.

Unlike the aforementioned countries, as well as many other jurisdictions, design patents in the US are not subject to maintenance fees or annuities.

For those who wish to file for and obtain design rights in multiple jurisdictions, international and regional systems exist which allow applicants to obtain protection in several countries in an often more efficient and cost effective way than filing in individual states separately. As with each jurisdiction, these design right systems possess their own procedures for renewal fees and payment.

An industrial design right applied for via the Hague System, for example, has the same effect in each designated state as it would if it were filed directly in that jurisdiction. They are valid for an initial period of five years from the date of the international registration, which is defined as the date of filing of the international application.

International industrial design rights may be renewed for two initial further 5-year periods, prolonging the validity term for up to 15 years. Thereafter, a right can be renewed up to the limit of years prescribed in the national or regional law of each designated state in which the design is granted. The WIPO will remind the right holder to renew a design six months prior to the due date of the renewal.

A Community Design is a design right registered via the regional system of the European Union Intellectual Property Office (EUIPO). Once a community design has been granted, it is valid for a period of 5 years counted from the date of filing.

It is possible for rights owners to renew the design a further four times for periods of 5 years respectively, meaning a EUIPO registered community design can be valid for a full term of 25 years in total.

The renewal fees are due during the last 6 months of any given 5 year protection period, and late renewal is possible within a six-month grace period by paying a corresponding surcharge.

Industrial designs filed and granted through the African Regional Intellectual Property Organization (ARIPO) have a validity term of 10 years from the filing date. The annuity fees are due on each anniversary of the filing date and are payable in respect of each designated state. They can also be paid within 6 months after the due date on the condition that the corresponding surcharge is paid.

As industrial design renewal procedures are subject to variation from country to country, applicants should take note of any annuity payment deadlines and fees in each jurisdiction they wish to maintain design rights. If you require advice on the renewal of design rights, or simply further information, please contact us.

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

Industrial Design Protection of Your Product Against Copying

To prevent people from copying, appropriating, or stealing the appearance of a product you have created, it is important to protect the product’s appearance. This type of IP protection can be achieved by way of Industrial design rights.

Varying slightly in different countries, the basic requirements for design protection are novelty and individual character (EU and Australia), sometimes complemented by the requirement of creativity (Japan), ornamentality (USA) or other such criteria.

A design can be worth registering if a consumer can easily distinguish the design of your product from other products in the same category. For example, Tangle Teezer hairbrushes have gained popularity not only thanks to the detangling features, but also the unconventional designs which are also protected.

Design protection can be a key driver in business growth, with the appearance of a product proving vital in promotion of sales and creating financial value. Protecting industrial designs can prohibit others from manufacturing, commercialising, marketing, importing or exporting products incorporating the same, or confusingly similar, designs.

If you are looking for advice on the protection of your design, feel free to contact us.

Hague system

Obtaining protection for industrial design rights in multiple jurisdictions via the national route may be time consuming and costly. The Hague System for the International Registration of Industrial Designs offers a more efficient and cost effective route for the registration of design rights in any, or all, of the 77 contracting parties to the system through the filing of a single application.

The Hague System was established by the Hague Agreement, adopted in 1925, and is now governed by the Hague Act of 1960, and the Geneva Act of 1999. The contracting parties privy to the Hague System cover 94 countries in total. Through the system, applicants may file one international design application designating the contracting parties in which protection is sought. Moreover, the system proves useful for not only the filing and registration of industrial design rights, but for portfolio management directly with the International Bureau of the World Intellectual Property Organisation (WIPO) as well, for example, design renewals and recordals of changes.

In order to be eligible to file for industrial design protection by way of the Hague System, an applicant must be a natural person or legal entity, which is either a resident of a contracting party, a national of either a contracting party or a member state of a contracting party, or have an effective business in a contracting party.

International applications can be filed with the International Bureau of WIPO either directly or through the IP office of the Contracting Party of origin, and should be submitted in any of the official languages of the Hague System, namely English, French, or Spanish. There are three standard sets of fees involved in filing for design rights through the Hague System, consisting of a basic fee, designation fees for each state respectively, and a publication fee, all of which are payable in Swiss Francs.

An international application can include up to 100 designs, so long as they are all within one class of the Locarno Classification, and must detail at least one reproduction of each design. A reproduction of a design can be in the form of photographs, drawings or other graphic representations of the designs. It is important to note, however, that some jurisdictions may not have provisions for the registration of multiple designs. In that case, the international registration may be divided before the Office of such jurisdiction in order to overcome the refusal ground, with this division not affecting the international registration itself.

Priority may be claimed in relation to an earlier application so long as it was filed with a member state of the Paris Convention or the World Trade Organisation, and if the international application is filed within a 6-month period following the filing of the priority application.

Once received by the WIPO, the application will be checked as to the basic formal requirements, such as payment of the relevant fees, and the quality of representation of the designs.

Upon completion of formal examination of the design by WIPO, the application will be published in the International Designs Bulletin, 6 months after the filing of the international application unless immediate publication or deferment thereof is requested by the applicant. Notice of publication will be sent to each designated office, which will check the publication accordingly.

The decision for registration of a design itself is taken by each designated state individually as per the substantive requirements set forth by national or regional legislation. As such, if an application does not result in registration in one jurisdiction, this does not impact the status of the design in any other designated state.

Each jurisdiction will therefore conduct substantive examination of the design, if any is stipulated, and will notify the applicant if their design has been refused protection within a period of 6 or 12 months from the date of publication, depending on the designated state. Any response to a refusal is dealt with directly between the applicant and the designated office and does not involve WIPO. If an applicant is not notified of a decision of refusal by the expiry of the prescribed time period, design protection is considered granted in that particular jurisdiction.

Once granted, an international design has the same effect in each designated state as it would if it were filed directly in that jurisdiction. International designs are valid for an initial period of five years from the date of the international registration, which is counted as the date of filing of the international application. Design rights may be renewed for further five-year periods, up to the limit of years prescribed in the national or regional law of each designated state.

The WIPO will also remind the right holder to renew a design, six months prior to the due date of the renewal.

Industrial design protection has become ever more prevalent owing to recent times, particularly in relation to laboratory and medical equipment which saw an increase in filings of 45% in 2020. As such, individuals and organisations looking to protect their designs may benefit substantially from using the Hague System to obtain protection in multiple countries, as it provides for a less costly alternative to filing in individual states and can be submitted in various jurisdictions in one language. Further, the System also enables applicants to obtain design protection through the WIPO with fewer formalities than if filed with each state respectively, and also simplifies the maintenance process.

If you are looking to file for design protection through the Hague System, please contact us for further information.

International (Locarno) classification for industrial designs

The Locarno Classification, or the International Classification for Industrial Designs, is a system used to determine classes of goods in relation to the registration of industrial designs. The Classification was established by the Locarno Agreement, a multilateral treaty which was initially adopted in 1968, and is administered by the World Intellectual Property Office (WIPO).

The Locarno Classification can be accessed online via the official WIPO IP Portal, which is published in both the English and French language. The Classification itself is revised continuously by a Committee of Experts, and new editions enter into force on a bi-annual basis on January 1.

The Locarno Classification comprises a list of 32 individual classes relating to the goods being registered as industrial designs, as well as corresponding subclasses. Both classes and subclasses provide for a generalised reference as to which type of goods should belong to each one.

The classification also features a list of goods in relation to industrial designs, in alphabetical order, indicating both the classes and subclasses to which they relate. The list of goods contains over 5000 entries in the English language and provides a more in depth insight into the classification of a design, alongside the explanatory notes.

All competent national offices of the Contracting Parties to the Locarno Agreement are obliged to use the Locarno Classification by way of including the numbers corresponding to classes and subclasses of the designs in its official documents and publications. However, the classification is also utilised by the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for Intellectual Property (BOIP) and the European Union Intellectual Property Office (EUIPO), as well as the International Bureau of WIPO in the context of the Hague System. To date, there are 60 Contracting States which are a party to the Locarno Agreement.

The Locarno Classification is a multifaceted system which assists users with classifying goods relating to industrial design applications using a single, uniform system. This, in turn, removes the need to reclassify the goods when filing for design protection in multiple jurisdictions according to each individual national classification system and also assists in the conduct of industrial design searches.

If you are interested in applying for industrial design protection, or are keen to know more about the Locarno Classification, feel free to contact us.

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