INTELLECTUAL PROPERTY LOCAL DESIGN REGISTRATION

Timeframe

6-12 months (if no objections or rejections arise)

Overview

Application for registration of an industrial design is a smart decision for protection of your intellectual property within the particular territory, granting you an exclusive property rights and preventing others from copying your design and aesthetic or ornamental aspects. Please be informed that an industrial design right protects only the appearance of aesthetic features of an article and it does not apply to any functional features, so if you are interested in protecting an article, which offers a new technical solution, then obtaining a patent shall be required.  [LINK - Find out more about patents].

If you are not seeking for an international industrial design protection, then you can file separate national applications for the registration of industrial design to the regional IP Offices of the countries in which you prefer to protect your design. If the sole reason for registration of an industrial design for your product is to own the rights to the intellectual property, we usually suggest to incorporate a company in low maintenance fee jurisdictions, and then to file an application as a legal entity. For a list of potential options, please contact our team members. In certain regions it may be possible to register an industrial design in the region concerned by filing a single application to the respective regional IP Offices. 

If you are a national or resident of a country, which is a member of:

Bangui Agreement, host institution:  African Intellectual Property Organization (OAPI),

Lusaka Agreement, host institution: African Regional Intellectual Property Organization (ARIPO),

The three “Benelux” countries, host institution: Benelux Office for Intellectual Property (BOP),

The European Union, host institution: European Union Intellectual Property Office (EUIPO),

There is an option to file an industrial design application to a local IP Office in order to obtain a protection for the industrial design in any other member state as well. One of the most important requirements for an industrial design is its originality and/or novelty, so, in order to avoid any possible negative scenarios of destroying its novelty and originality, it is crucial to file an application before any disclosure of a design happens. However, if the industrial design has been already disclosed to the public, some countries still allow to file an application for the registration if the disclosure has taken place from 6 to 12 month ago during so called “grace period”. Nevertheless, we recommend avoid the disclosure by any means, because in some countries there is no “grace period”, and the design may no longer be considered as “new” and “original”.

Before applying it is important to define what are the requirements for the industrial design to be eligible for protection.

The design must:

• be new and unique;
• have an individual character;
• be different from the existing articles of the same title.

In general, the application shall consist of the following, otherwise it will be refused:

• Filled in application form;
• A clear title of an article;
• A description of the design;
• Drawings and photographs;
• Fee confirmation document;
• Power of Attorney if the applicant is a hired agent.

If application is accepted after its initial processing, then the following stages take place:

1. Classification of an article;
2. Preliminary examination;
3. Comparative research;
4. Comparative examination;
5. Successful registration.

Benefits

Industrial design rights are territorial, so they are limited to the country or region where protection has been granted. It is advised to obtain a protection within each market you are interested in as there may not be such an opportunity later on due to the design being already disclosed to the public. We advise to start the registration of your industrial design within the local market by applying to the local Intellectual Property (IP) Office.

The benefits of registering a local industrial design are as follows:

• the exclusive right to create the articles of a unique design within the particular territory/-ies;
• the legal protection against infringers and dishonest competitors;
• the ability to sell or assign to another person the industrial design or license its use.

Our services

• Registration of a local company (if required);
• Preparation of an application for a regional registration of an industrial design;
• Assistance with drafting any other related materials, e.g. descriptions, titles, POAs;
• Certified translations of the documents into local languages;
• Filing an application for obtaining a local design protection on the basis of POA.

*You may be required to appoint a mandatory agent for representation services during the process of registration of an industrial design depending on the local legislation, the fee is not included.

*The total cost may vary since prices depend on the origin of the local company, number of states where you seek protection, amount of translations and on the specific fees that each state applies.

*Our standard price does not include replies to office actions, reacting to third party responses/requests/oppositions with respect to the application.