Design Protection Abroad
Registered designs only have legal effect in the country in which they are registered (territoriality principle). That means that designs registered at the German Patent and Trade Mark Office (DPMA) are protected in the Federal Republic of Germany only.
If you need protection for your design outside Germany, the following two options are available to you:
- the application for a Community design
- the international application
You can file applications for registration of a Community design or international registration, at your choice, either directly at the European Union Intellectual Property Office (EUIPO) as well as at the World Intellectual Property Organization (WIPO) - or - subject to a fee - via the German Patent and Trade Mark Office.
The registered Community design
The registered Community design provides uniform protection in all member states of the European Union with a single application.
The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is in charge of the registration of Community designs. Information is available on the homepage of EUIPO.
The unregistered Community design
No application for registration is required for an unregistered Community design. Protection is automatically conferred by way of disclosure, that means when the design is first published within the European Union. “Disclosed” means: the design is exhibited, offered or otherwise published (for example, by a media advertising campaign). The first disclosure can also mean the publication of a German design in the Design Gazette (Designblatt).
The unregistered Community design provides only limited protection. As the designer or their successor in title, you only have the right to prohibit others from copying your design. This requires that those who created the rival design had knowledge of your design. Independent parallel creations cannot be challenged. Furthermore, the duration of protection is limited to three years.
If you solely rely on the protection provided by the unregistered Community design, you must provide proof of the arising of protection and the copying of the design in any later infringement proceedings. Therefore, it is essential that you document the publication of your design.
The international registration
Under the Hague Agreement Concerning the International Registration of Industrial Designs, it is possible to register a design in an international register.
The Hague system consists of various acts (Hague Act, Geneva Act), which individual countries, including Germany and France, but also the European Union have become party to. It does not provide "worldwide" protection, but only covers those contracting parties that you designate in the application.
The international application is processed by the International Bureau of the World Intellectual Property Organization (WIPO). An earlier national application is not necessary. Forms and information in English, French and Spanish are available on the WIPO homepage.
Picture : iStock.com/Ismagilov
Last updated: 20 October 2020