We have recently been asked a very interesting and commercially important question, which we thought we would share.
Background: We have filed design applications in Australia, and corresponding applications in the US, utilising the International (Paris) Convention. The earliest publication of the designs that are the subject of these applications was less than 12 months ago.
Question: We are outside the Paris Convention period of six months from the first design application filed in Australia, but we want to expand and commercialise into other markets – can we obtain IP (Design) protection in other jurisdictions?
The International Paris Convention for the Protection of Industrial Property (‘The Convention’):
The Convention enables applicants to claim a ‘right of priority’ for patent, trademark and industrial design applications.
This right means that, having filed an application in one of the contracting states (in this case, Australia), the applicant may also apply for protection in any of the other contracting states. This must be done within 12 months for patents, or within six months for industrial designs and trademarks.
These subsequent applications will be treated as if they had been filed on the same day as the first application. In other words, they will have priority (hence the expression ‘right of priority’) over any applications filed by others during the same period of time for the same invention, utility model, trademark or design.
In this case more than six month had passed since the client filed their first design application in Australia, so it was no longer possible to apply under The Convention for design protection in the other contracting states – which includes most commercial countries.
The European Community Designs (ECD)
However, an important aspect of the ECD system is the provision of a ‘grace period’. This means that a prior disclosure (in this case, publication) of a design by its designer within 12 months before the filing date of an ECD application is excluded from a determination of novelty or individual character (which a design must pass in order for registration).
So in this scenario, we can consider filing an ECD application, which will extend protection of the design within the European Union.
(It’s important to note that while the ECD system allows this grace period, many countries do not – or only allow a shorter period. So disclosure or publication of a design may prevent it from being registered in individual countries, especially outside the European Union.)
Member States of the EU include:
Austria, Bulgaria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom.
An advantage of an ECD application is that one application can include multiple designs, and the official fee for additional designs operates on a sliding fee scale. A registered ECD gives its proprietor the exclusive right in the EU to make, use, sell, import and export any product embodying the design, if it is a shape, or bearing the design if it is ornamentation.
These rights extend to similar designs which do not produce a substantially different impression on the informed user.
The owner will be able to take action against any third party who infringes their rights within the EU – even if they are using a design that they created independently and without copying.
How long will the ECD registration last?
Registered ECDs are protected for an initial period of five years. They can be then renewed four times, giving a maximum life of 25 years’ protection.
A registered ECD gives a ‘monopoly’ right, i.e. a right to stop anybody else using the registered design, irrespective of whether they were not aware of its existence.
Criteria for Registration of ECD
The design which is the subject of an ECD application for registration has to meet two criteria. It must:
- be novel, and
- possess individual character.
Both these criteria are judged with reference to designs which have been made available to the public before the effective filing date of the application. As explained above, previous publication of the design within 12 month before the ECD application will not be referenced.