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Now that the Cheltenham horse racing festival is over, what springs to mind is the imminent (13 May 2015) entry of the Untied States and Japan to the list of runners and riders in the Hague Agreement Stakes. What remains to be seen is whether or not U.S. and Japanese owners will enter this field or alternatively, bypass the Hague Agreement and pursue a separate Registered Community design (RCD) utilising the services of their preferred local European Attorney with experience of the nuances on how to register in a form which will give their particular horse, the best chance of success.

Under the European Design Regulation, there is a twelve month grace period. There is no great necessity for a Registered Community Design (RCD) to mimic its U.S. Design Patent equivalent and indeed, there are reasons why you may choose not to do so. By way of example, even what may be perceived to be recognised drawing conventions may be interpreted differently. In the United States, structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is used, may be represented in the drawings by broken lines. However, in Europe, broken lines may not necessarily be interpreted in such a way and, for example, in Samsung Electronics (UK) v Apple, Inc. [2012] EWHC 1882 (PAT), a U.K. Court accepted that a reasonable interpretation of a broken line in context was to show a border visible underneath a transparent screen. Such an interpretation has received much criticism but in Europe, it is a safer practice to avoid (where possible) the inclusion of elements in the drawings which may serve to put the design in context but against which protection is not itself being sought. In addition, it is common practice amongst European practitioners to spread their bets by filing multiple designs in a single application. This is possible where the design in question falls into the same Locarno Class.

The message is hold your horses and give this full consideration. Not every horse is a suitable entry in the same race. We already have the experience of the Madrid Agreement Stakes which U.S. owners bypass in great numbers favouring instead, individual OHIM filings. A U.S. trained horse may not be suitable for the often wet and windy conditions in certain European countries.