28 June 2012

Got a Registered Community Design, got Europe?

As my 'Got a CTM, got Europe?' blog proved popular and continues to receive regular hits - and following on from my blog on the rising importance of registered designs - it seems worthwhile to write about protecting designs throughout Europe.

As before, I will use the definition provided by Wikipedia for Europe.

We will focus on the applicant being from a member state of the Hague System (Geneva Act) e.g. an applicant from the European Union. This rules out applicants from non-Hague countries such as the United States. However, a US applicant with "a real and effective commercial or industrial establishment" or "habitual residence" in a member state could take advantage of the system. Ownership could also be through a trust company incorporated in, say, the EU and then licensed back. However, there is no provision for the recording of a license at WIPO against a Hague International Registration which could make this less desirable.

Benefits of the Hague system, contrasting to the Madrid Protocol for trade marks, are:

1. There is no need for a base registration.
2. You can designate your own country (e.g. the EU) in an application.

This means a single International application can be made to cover the home country of, say, the European Community plus Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Croatia, Georgia, Iceland, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Serbia, Switzerland, Turkey and Ukraine.

For the sake of argument, if we were to file one design with seven reproductions and no deferment of publication it would cost CHF 1560 (approximately €1300/$1630) in official fees.

The inclusion of the European Community would not provide protection to any further territories within Europe but outside of the European Union with the exception, as far as I understand, of the Isle of Man. My understanding extends further to it not providing protection to Gibraltar, as I have previously blogged.

Nevertheless, the Isle of Man is covered by a registration in the United Kingdom. A registration in the United Kingdom is required to provide automatic protection to Gibraltar. It also provides protection to the Sovereign Base Areas of Akrotiri and Dhekelia (as I cannot see that design legislation was delegated to the Republic of Cyprus government). It is this same law, dating from when Cyprus was a British colony, that still appears to be in force to protect designs in the Turkish Republic of Northern Cyprus ("TRNC"). The TRNC, recognised only by Turkey, has not introduced design legislation of its own.

Obtaining a Registered Design in the United Kingdom, under the same criteria as the International filing above, would cost £60 in official fees (approximately €75/$95).

Such a UK Registered Design would need to be extended to the Channel Islands. Official fees here are £120 in Jersey (approximately €150/$190) and £100 in Guernsey (approximately €125/$155) plus an official fee of £22 (approximately €28/$35) each to the UK Designs Registry for the certified copies required to substantiate the applications locally.

Kosovo introduced a new designs law in 2011 with the assistance of OHIM. With official fees of €40 (approximately $50) it is also inexpensive.

The EU designation will cover Denmark, but a Danish national design registration is required to provide protection to the remote Faroe Islands. Denmark operates a deposit system for designs meaning they are registered quickly and efficiently. The basic fee is DKK 1200 (approximately €165/$205).

This means a significant part of Europe can be covered by six simple applications at a very reasonable cost (official fees of approximately €1911/$2395).

Many businesses will consider protection for Gibraltar, the TRNC and the British bases on Cyprus, the Channel Islands and Faroe Islands as unnecessary. The estimated combined population is little over half a million with over half of this figure made up of the TRNC's population, although this figure is disputed. Omitting filings to cover these territories will see official fees drop to approximately €1340/$1680).

You may have agent charges on top of the official fees and, with the probable exception of a Hague filing, agent fees will be more expensive than those charged by the Design Offices. I can speak for my firm and know we can provide very reasonable costs for coordinating the filings.

Further afield, the only remaining European states to have design legislation are Belarus, Kazakhstan and Russia. In these countries designs are more expensive due to higher official fees, agent charges and more vigorous examinations resulting in increased chances of objections. However, as the rest of the continent can be protected so inexpensively there can be room left in budgets to pursue registration in these three emerging markets that form a Customs Union.

19 June 2012


Despite a terrible reputation for its food, the United Kingdom has historically lead the way in many areas. In terms of intellectual property, it introduced the world's first trade mark registration system through enactment of the Trade Mark Registration Act 1875. However, design legislation pre-dates this - by some time - starting with the Designing & Printing of Linen Act 1787.

In fact, there was a branch of the UK Patent Office based in Salford (a city in walking distance from my office) purely for the receipt of textile designs. This area of the country was nicknamed

During the 20th Century, I think it is fair to say that designs fell behind trademarks (and patents) in terms of prestige and perceived value. However, these reflections are being evaluated if not already revised.

Quotes from two branding professionals:

"Design is intelligence made visible", Alina Wheeler
"Design is an opportunity to continue telling the story, not just to sum everything up", Tate Linden

These quotes are, of course, not restricted to the intellectual property right definition of "design". However, design rights are now often seen as an increasingly critical piece of a brand owner's IP arsenal. They can provide an invaluable right given a registered design is not restricted to certain products in the same way as a trademark registration must be. The Locarno classification exists but not to pigeon hole in the same way as the Nice Classification for trade marks. There is "no principle of speciality".

However, the addition of Class 32 covering "graphic symbols and logos, surface patterns, ornamentation" to the Locarno classification in 2009 has made it easier for brand owners to protect the likes of logos through design registration.

Obtaining design protection is largely seen as a supplement to trade mark registration rather than an alternative.

SMEs are often more pressured on costs to rely on designs only - and new products are created and protected through registered designs whereas a verbal brand is not developed or a descriptive name is adopted. From an IP professional's perspective this may not be ideal but at least they are recognising that a form of intellectual property protection is useful.

With steps being taken by the UK and the International community to simplify and harmonise design legislation, the status of registered designs in IP's 'hierarchy' should continue to rise.

14 June 2012

All is revealed: the newly applied for gTLDs

So yesterday was 'Reveal Day' when ICANN provided a list of new gTLDs applied for, sometimes referred to as .BRAND although they are not exclusively for trade marks.

There will be some of interest to legal entities with the applications for .INC, .LLP, .LTD, .GMBH, etc. which could enable them to register domain names beyond .COM.

Applications have been made for obviously desirable gTLDs: .APP, .GAME, .HOTEL, .MOVIE, .MUSIC, .TICKETS, the optimistic .LOVE and something I appear to order on the internet far too regularly: .PIZZA.

There are also geographic applications in which domain names will presumably be issued to applicants with a connection or residence. Such examples include from France, .ALSACE and .CORSICA and from South Africa, .CAPETOWN, .DURBAN, and a more familiar and easy to spell, .JOBURG. These applications seem to have been made on behalf of regional organisations and governments, although I spotted .CYMRU (this meaning Wales in Welsh) was applied for by Nominet, who administer the ccTLD for the United Kingdom.

When it comes to trade marks, it is no surprise that some of the world's biggest brand owners have applied so we see the likes of .MICROSOFT, but it is perhaps more interesting to see who has not applied.

Using Interbrand's top 25 brands (2011), there is no .GE or .HP as it appears two-letter gTLDs are not allowed but then there are no applications for .GENERALELECTRIC or .HEWLETTPACKARD either. H&M would have needed to spell out their ampersand (.HANDM) and there is no application here. There are also no applications for .DISNEY, .MERCEDES, .GILLETTE or .LOUISVUITTON and, arguably most suprisingly, for .COCACOLA or .COKE; .PEPSI is also not subject of an application. 

It is interesting how different brand owners have considered an application necessary or not. They were very expensive, but to massive brands still surely not out of their reach.

There could be a battle for .GUARDIAN which has been applied for by a British newspaper and American life insurance company.

L'OrĂ©al have filed a number of applications. A number of these are for their brands but they have also decided to go for some generic words too: .BEAUTY, .HAIR, .MAKEUP, .SALON, .SKIN plus one in non-Latin characters.

In fact, generally speaking there have been many applications for gTLDs in non-Latin characters.

Finally, there is also an application for .WTF (used as a euphemism in English) and .SUCKS, which one can only anticipate would be highly controversial.

There are now seven months in which objections on various grounds can be filed with an appropriate Dispute Resolution Service Provider. For brand owners, the 'Legal Rights' avenue is likely to be of most interest and objections for these will be handled by our colleagues at WIPO. I wonder how many are going to be filed...

4 June 2012

Madrid madness!

The Philippines accession was perhaps more surprising as Colombia joining the Madrid Protocol was anticipated. However, they have shocked us somewhat with the speed of their accession. As I understand it they were aiming for the end of the year with local practitioners more conservatively expecting an early 2013 joining date.

There is not much to add to WIPO's announcement. As they say, India, Mexico and New Zealand have made a number of internal measures meaning Madrid Protocol membership is on the horizon for them.

We must wait to see if this is the catalyst towards a more rapid increase in Madrid Protocol membership and, specifically for Latin America, if this will swim against the "pink tide".