International Designs Protection for Australian Applicants (as at 20 April 2011)
1.1 There are several courses of action possible for pursuing international design protection made possible by virtue of several international agreements to which Australia is a party as summarised below:
2. Convention Applications
2.1 The Paris Convention of 20 March 1883 provides that Convention applications may be filed up to six months from filing a design application for the same design in one Convention country, and still retain the filing date of that application as a priority date in the remaining Convention countries. Thus, if you have an Australian Design Application, you may file applications in any one or more Convention Countries claiming the Australian filing date as a priority date provided the minimum filing requirements are met within six months. In this respect, please refer to our comments under General Guidelines below. Australia also has other arrangements, such as bilateral agreements, reciprocity through the World Trade Organisation, or “inter-imperial” arrangements, which provide an equivalent 6-month priority period whereby an Australian filing date may be used as a priority date. The Designs Gazetteer in this website gives an indication of which countries may be treated as Convention Countries, whether by way of the Paris Convention, or these other arrangements.
2.2 In addition to the above, regional design registration organisations for Europe and parts thereof and Africa are effectively members of the Paris Convention. Accordingly, design applications may be pursued in such regional design offices claiming a right of priority under the Paris Convention. Regional design registration organisations are discussed later in this advice.
2.3 Costs for filing Convention applications would be typically range from $1,200.00 to $2,000.00 per country per design. Countries permitting several designs to be covered by a single registration are usually more economical if several designs are to be covered at the same time.
3. Individual Countries
3.1 Individual Design Applications may be filed immediately in separate foreign countries at the typical costs given above for Convention Countries. If this course of action were to be adopted, then before proceeding with the foreign applications, due consideration should be given to conducting a search to ascertain whether the design is novel and likely to result in registration. It may also be prudent to assess the likelihood whether the manufacture and/or use by you of the design would infringe existing rights.
3.2 Since Australian Design Applications may proceed relatively rapidly to registration, whereupon publication of the design occurs, it may be prudent to delay prosecution of an Australian Design Application so as to preserve options for filing overseas design protection if there is a possibility that such a course could be desirable. Accordingly, where overseas design protection is required, the Australian case may be held in abeyance for a limited time by withholding, for example, the filing of the required number of copies of representations of the design.
4. Regional Design Protection
4.1 Several organisations exist covering several geographically or politically associated countries, namely, the Benelux Union (BX), the European Community (EC), the African Intellectual Property Organisation (OAPI), the African Regional Industrial Property Organisation (ARIPO) and the recently established Gulf Co-operation Council. With the exception of the Benelux Union, regional design registering organisations are not well developed.
4.2. Benelux Union
4.2.1 Belgium, Netherlands and Luxembourg have effectively formed an single entity for the registration of trade marks and designs. Separate protection in individual countries forming the Benelux Union is not possible. A Benelux design application costs about the same as a national application, and Paris Convention priority can be claimed.
4.3. African Regional Design Registrations
4.3.1 There are two regional design registering entities, together covering about half the territory of Africa.
4.3.2 The more developed one is the African Intellectual Property Organisation (OAPI) comprised largely of Francophone African countries. For patent, utility model, trade mark and design registration purposes these countries have effectively formed a single entity. Designation of individual member countries is not possible since the territorial application of an OAPI design registration extends to all member countries. OAPI is a member of the Hague Union, thus permitting all of the member countries of OAPI to be covered with a single design registration covering OAPI and other members of the Hague Union.
4.3.3 The member countries of OAPI are indicated in the Designs Gazetteer by the two-letter code OA. The cost of an OAPI application is typically of the order of $8,000 including GST, and is prosecuted in either English or French.
4.3.4 The second African regional organisation is the African Regional Industrial Property Organisation (ARIPO), comprised largely of Anglophone African countries. ARIPO comprises a number of protocols for different kinds of intellectual property, the relevant one for patents, utility models and industrial designs being the Harare Protocol. Reference to ARIPO membership in the Designs Gazetteer means signatories to the Harare Protocol. Selected member countries may be designated in an ARIPO application lodged in the patent or designs office of any member country, and once successfully prosecuted and registered, at least in theory, an ARIPO design registration is automatically registered in member countries which have not rejected the application according to their local law within six months from grant of the ARIPO registration. Some ARIPO countries have provisions for independent registration of designs. ARIPO members are indicated in the Designs Gazetteer by the two-letter code AP as at the date indicated on the Gazetteer.
4.3.5 In spite of the best intentions of the member countries of ARIPO, it is understood that no member country has ratified the Harare Protocol insofar as the recognition of ARIPO design registrations is concerned. Accordingly, it is suggested that an ARIPO design registration not be relied upon to give effective protection of a design in such countries.
4.4. European Community Design Protection
4.4.1 A single design registration may be filed with the Office for Harmonisation in the Internal Market for registration of a design covering all member countries of the European Community (EC). Member countries of the European Community are indicated in the “Region” column of the Designs Gazetteer by the two-letter code EC. The European Community is a member of the Hague Union, thus permitting all of the member countries of the EC to be covered with a single design registration covering the European Community and other members of the Hague Union.
4.5. Gulf Co-operation Council as at 5 June 2008
4.5.1 The Gulf Co-operation Council (GCC) was established in 1981 for the economic co-operation of Arab States comprising Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. In 1993, the GCC passed a law for the granting of patents with effect throughout the GCC, but although there is a stated intention for the GCC to eventually provide for regional design protection, it is expected that there will be a delay before any developments emerge in that regard. The members of the GCC are indicated in the attached Gazetteer by the code GC.
5. International Design Deposit under the Hague Agreement
5.1 The Hague Union has been established under the Hague Agreement to provide an International Design Deposit system. However, Australia is not a party to the treaty, and accordingly, Australian applicants are not able to take advantage of the International Design Deposit except in some unusual circumstances. The International Design Deposit system is undergoing a simplification process, the London Act of 1934 being “frozen” in an effort to make the International Design Deposit system compatible with design law of more countries. The other two “Acts” (Hague, 1960 and Geneva, 1999) are autonomous and totally independent of each other. There is also a “Complementary Act” (Stockholm, 1967), but all signatories to the Hague, 1960 Act are signatories to the Stockholm, 1967 Act. There are 41 members of the Geneva, 1999 Act, 34 members of the Hague, 1960 Act, some 18 countries being members of both the Geneva, 1999 and Hague, 1960 Acts.
5.2 Applicants having a nationality, residency or a “real and effective commercial or industrial establishment” in a member country of the Hague Union may lodge an International Design Deposit at the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland, or the local intellectual property office of a member country if the local law so provides or requires. Under the latest Geneva, 1999 Act, applicants do not need to be resident in a member country of the Hague Union.
6.1 Design protection is sometimes afforded automatically in the case of some colonial and former colonial powers, or where smaller countries conclude unilateral or bilateral arrangements for extension of protection. A British Design Registration extends automatically to Anguilla, Antigua and Barbuda, Bermuda, British Indian Ocean Territory, Falkland Islands, Fiji, Gambia, Gibraltar, Grenada, Guyana, Isle of Man (not Community Designs), Kiribati, Montserrat, Saint Helena, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Seychelles, Sierra Leone, Solomon Islands, Tanzania and Uganda. See Extending UK IP rights abroad at the UK IPO website for details.
7. General Guidelines
7.1 The above information has been prepared from several sources, and every effort has been made to ensure accuracy. Costs will vary with foreign exchange rate fluctuations and changes in government fees and local and foreign associates’ charges. I take no responsibility for any errors or omissions, and specific advice should be sought from a competent legal professional for your particular requirements. Up-to-date information is available from many sources including the Internet. The WIPO website is recommended.
7.2 The cost estimates above may serve as a general guide only and considerable variation would be expected for complex cases and cases which do not follow a straightforward application process. Australian Law Firms and Patent Attorney Firms have adopted competitive scales of charges, but it is suggested that because Registered Australian Patent Attorneys are specialists in the field of intellectual property, they are best qualified to represent Australian applicants. Instructions should be given to your legal representative a minimum of two months prior to filing foreign cases unless indicated otherwise. Please note that there may be considerable cost penalties for late remittance or late instructions. Moreover, for late instructions or payment, meeting filing dates, whether for Convention applications, national registrations or any other requirement necessary to keep a case alive, cannot be guaranteed.
7.3 Many countries have onerous formality provisions, and as such, cost estimates given above do not include costs relating to notarisation, authentication and legalization of forms, the preparation of formal drawings or the provision of extra translations, extra information or extra search fees, or government tallages. Furthermore, cost estimations from some countries can be unreliable. However, cost estimation data can be obtained for most countries if such is required by seeking advice from a Patent Attorney.
7.4 It should also be appreciated that the filing of a design application begins a process of prosecution which typically involves an annual cost of between one third and two thirds the application costs over a span of about one (1) year, though prosecution may commence at any time from filing to several years from filing. Fees involved for an application to proceed to registration are typically between 10% and 50% of application cost. OAPI has relatively involved registration procedures which typically involve a cost of approximately $1,500.00. Additionally, renewal fees, usually five-yearly, are payable in most countries over the life of a design registration or design patent, and are typically between 5% and 80% of the application cost.
8. Current Events (as at 20 April 2011)
8.1 The information following has been prepared from information received, and so I cannot accept responsibility for its accuracy or currency. If required, specific and up to date advice should be sought from a competent legal professional.
8.2 Although there has been a considerable international convergence in intellectual property laws over recent years, developments in designs law have been comparatively slow. There remains a significant disparity in laws of different countries, and a dichotomy exists between countries where design protection is based upon “copyright in the design” and countries where design protection is based upon “monopoly in the design”.
8.3 The dissolution of Netherlands Antilles into the three separate entities of Bonaire, Saint Eustatius and Saba (BES Islands), Curaçao and Sint Maartin has resulted in a corresponding division of the former Netherlands Antilles designs register. The BES Islands will probably retain the original designs register, and it is not yet clear what arrangements are being made for protection in the other two jurisdictions. Membership of the Hague Union should be effective in Curaçao and Sint Maartin (which occupies the Dutch half of Saint Martin), and it is likely that independent design registers will be established. It appears that Benelux design registrations automatically extend to BES Islands, but it is not yet clear whether BES Islands registrations may be extended to the territories of Sint Maartin and that Curaçao by re-registration or such like. The Netherlands deposited instruments of denunciation of, and acceptance of termination of, the London Act, 1934 and the Additional Act of Monaco, 1961, with regard to Aruba, Curaçao, Sint Maarten, and the BES Islands. The said denunciation shall take effect, in respect of these territories, on 13 December 2011, unless all the required instruments of acceptance of termination of the London Act have been deposited before that date. Either way, the London Act, 1934 will be effectively “frozen” in the Dutch West Indies from 13 December 2011.
© 2011 Bill Anderson