One of the ways of potentially trying to protect the 3D shape of a product (assuming it meets the requirements) is to apply for a registered design. There are two main ways of applying for a registered design:
- You could apply directly to the office of the territory that you would like protection in; or
- You could apply via the Hague system for the international registration of industrial designs.
On 13 March 2018, the UK completed the final step to join the Hague system meaning that from 13 June 2018 you will be able to apply for a UK design via the Hague system. The EU has been a member of the Hague system since January 2008 and EU registered designs currently include protection for the UK but it is uncertain whether this will still be the case following Brexit.
The Hague System
The Hague system allows a person/company to file one application for a registered design in multiple territories that are members of the system. One of the advantages here is that (e.g. in the UK and EU) there is a requirement that designs are ‘novel’ (meaning that an identical design or a design differing only in immaterial details must not have been disclosed anywhere in the world) so, by applying for numerous territories at the same time, you would not be potentially invalidating your design in one territory by having an earlier identical design filed in another territory (another way of overcoming this issue is by claiming priority from an earlier design). The Hague system allows designs in multiple territories (if granted) to be renewed and changes of address, names or ownership to be recorded via one administrative step (rather than filing recordals or renewals via the office for each separate territory) and, in theory, applying for designs via the Hague system should be cheaper than applying separately in each individual territory. However, it should be noted that there may be issues with using one application for multiple territories as some territories will have specific requirements (e.g. as to the drawings that you submit as part of your design) so such issues may need to be corrected later potentially incurring additional fees and time, so there are times that it would be more beneficial to file directly in certain territories.
If you would like further advice on registering a design then please do not hesitate to contact us at Briffa.