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Protect industrial designs overseas with one application

The European Commission today set out proposals that would allow companies to use one application to protect their designs both within the EU and in countries that have signed up to a treaty on the international registration of industrial designs.22 Dec 2005

This international system, run by the World Intellectual Property Organisation (WIPO), is governed by the Geneva Act of the 1925 Hague Agreement concerning the international registration of industrial designs.

The Geneva Act, signed on 2nd July 1999, became fully operational on 1st April 2004. Eighteen countries, including Singapore, Korea, Turkey and Switzerland, have become party to the Treaty. But it is not a truly global system yet: among the absentees are, for example, the US, Canada, Japan, Australia and China.

In general terms, the Act allows designers to obtain design protection in a number of countries through a single international registration filed with the International Bureau of WIPO, replacing a whole series of registrations with different national or regional offices.

This is similar to the EU registration system, which allows EU designs to be registered throughout the EU by a single registration with the Office for Harmonisation in the Internal Market (OHIM), based in Alicante.

The Commission believes that signing up to the simplified procedure embodied by the Geneva Act would lead to a saving of costs for companies: there would no longer be a need to provide translations of the documents, to keep watch on the different deadlines for renewal of a great number of national registrations, and to pay a series of national fees and fees to agents in different countries.

All this would have a positive impact on research, development and innovation activities, says the Commission. The simplified procedure would also facilitate access to protection in third countries, which would encourage EU companies to trade with these countries in the knowledge that their designs are protected.

In addition, the creation of a link between the Community design system and the Hague arrangement would benefit a wide range of industrial sectors, including textiles, furniture, cars, jewellery and mobile phones.

In 2004 the Commission launched a consultation on the possible impact on business of EC accession to the Hague system. An overwhelming majority of businesses, professional organisations and Member States were in favour of accession in the near future.

It has now put forward two proposals – the first authorising the accession of the European Community to the Geneva Act, and the second giving effect to that accession, in particular by amending the EU Regulation on Community Designs.

"These proposals will allow EU firms to safeguard valuable design rights with less bureaucracy while at the same time encouraging them to trade with third countries in the knowledge that their design rights are protected,” said Internal Market and Services Commissioner Charlie McCreevy. “I hope that the Council will now adopt these proposals as soon as possible."