International design protection extends to Europe

Companies in the European Union will next year be able to file just one application to protect their designs and have those designs protected across Europe and in many countries around the world.

The European Commission has signed up to a World Intellectual Property Organisation (WIPO) agreement, which will protect designs with just one application. But while the agreement gives protection around the world, major industrial nations including Japan and the US have yet to sign up.

Called the Geneva Act, which is part of the Hague Agreement, the system allows one application for design protection to apply in many countries. Designs can be filed directly with WIPO even if there is no pre-existing national design protection in place.

"European businesses will now be able to obtain and protect their designs internationally in a simple, affordable and effective way," said the European Commission's Internal Market and Services Commissioner Charlie McCreevy. "This should further stimulate trade and innovation, create new commercial opportunities and boost integration within the EU Internal Market."

Trade marks specialist Rebecca Tilbury of Pinsent Masons, the law firm behind OUT-LAW.COM, said that the system has advantages for business.

"It will mean that designers will no longer have to file national applications and have a massive design registration portfolio but could effectively select all their countries from the those members of the Geneva Act and obtain one registration designating those specific territories," she said.

"One of the main benefits of this system is that not only does it move closer to the options available to those wishing to register a trade mark internationally but will save designers and companies a considerable amount of money as there would be no need to file a separate Community Design Application."

Europe already has a system, the Community Design system, to protect designs across Europe. From 1st January 2008, though, that protection will extend to all Hague Agreement signatory countries. Similarly, Hague Agreement signatories will gain protection in the Community Design system.

Trade marks attorney Lee Curtis of Pinsent Masons said that the system was similar to the international trade mark protection system, the Madrid Agreement.

"It is similar to the Madrid Agreement in that you file a single design application at WIPO covering any number of member states," he said. "The crucial difference with the Madrid Agreement system is that you do not need a base application in a member state to base the international design application on. The application can be filed directly with WIPO with no corresponding national protection in a member state."

The European Commission said that the Community Design system, which has been in operation since 2003, has 267,000 designs registered with it, and that the Geneva Act's 23 countries have registered 146,000 designs with it.