Earlier this year, the community design celebrated its tenth birthday. On 1 April 2003, the first community design was registered in Alicante and since then more than 690,000 designs have been registered. The yearly filings increase by a rate of no less than 78,000 a year.
I think it’s fair to say that the community design has been a roaring success. For the past ten years, it has been possible to obtain a registration with very little trouble. The unitary nature means that a single, central application is all that’s needed to obtain protection in all 28 member states, and that protection is automatically extended to new member states as they join. Further, protection through this system is cheap, and most registrations can be obtained in as little as two or three days.
What could be better?
Alas, it is common knowledge that there is no such thing as the perfect system. As the community trademark is growing up and closing in on its teenage years, it is starting to meet with competition from the younger Hague System, which can be seen as a parallel to the Madrid Protocol for trademarks.
The Hague System allows for centralized design registration internationally, and more and more countries are starting to join this system. It is rumored that both China and the USA will join by the end of this year, which would make the Hague system a heavyweight when it comes to the battle between registration systems.
So what are the differences between the two systems, and which should you choose?
The most obvious difference is the scope of protection. The registered community design covers only the EU-member states. So if your interest lies outside of the community, you would be well served to consider using the Hague system instead.
Another difference, which is certainly worth taking into consideration when planning your design strategy, is the number of reproductions allowed in the respective system.
The reproductions are the bread and butter of the design registration, as they define the right itself. Currently, an applicant is limited to just seven views of the design in question if the application is filed through OHIM. Further, the only accepted format is still pictures or drawings. It is worth mentioning that South Korea now allows film clips as part of the registration, and that this is one possible way in which the community design might look at improving itself.
The Hague System on the contrary imposes no such restrictions on the applicant, allowing a potentially unlimited number of reproductions of the same design, as long as they are filed electronically. This allows for a much more thorough description of e.g. designs with moving parts, allowing you to show the design in several positions.
On the other hand, the WIPO sets the limit for the number of designs allowed in one application to one hundred, where the OHIM has no limit on how many designs are allowed per application.
The fee systems are also different, and which solution works out cheaper depends on the number of designs to be filed under the same application, the geographical extent and whether or not publication should be deferred.
These discrepancies give rise to a number of important questions when it comes to choosing the right design registration strategy. What kind of business are you, and what are your needs? Do you intend to file multiple applications at once, or will you file for single design registrations a few times a year? How complex are your designs? Can they be adequately described in just a few pictures? Or are you intent on protecting not just the whole, but every single detail? What is your budget like? And of course, what are your key markets?
All of these questions form part of the bigger picture when designing the best possible strategy for any given applicant. You are – of course – welcome to contact one of our experienced attorneys if you would like our input on how to optimize your design strategy.
Mette Bender, Attorney at Law