Patenting industrial design in the European Union

Currently, there are three ways to obtain legal protection for an industrial design in the European Union: by registering a national patent in the country of interest, by registering a regional design of the European Union, and by internationally registering an industrial design under the Hague Agreement.

Registration of a national patent

This route is preferable if the applicant is interested in protection in one or two specific EU countries. By choosing national registration, the applicant can reduce expenses due to the relatively low cost of this procedure. However, in the case of patenting under the national procedure, it is essential to consider the specific requirements and legal nuances of each country’s national legislation when preparing the application materials.

European Union Industrial Design Registration

Alongside national registrations in individual EU countries, the European Union offers a unified system for registering industrial designs—known as the European Union Design—which provides uniform protection across all EU member states. This streamlined procedure is easily accessible not only to large entities but also to small and medium-sized enterprises, as well as individual design creators.

The main advantage of this system is that by filing a single application in one language and paying a single fee, the applicant obtains rights that are automatically valid in all 27 countries of the European Union and the United Kingdom. At the same time, if any country joins the European Union, the legal protection of the design will be automatically extended to the territory of such country in full.

Applications for design registration in the EU are submitted to the official body responsible for trademarks and industrial designs in the Union. Formerly known as the Office for Harmonization in the Internal Market (OHIM), this authority has been called the European Union Intellectual Property Office (EUIPO) since March 23, 2016.

Protection of registered and unregistered industrial designs

Under the EU design registration system, there are two different forms of protection: unregistered EU designs and registered EU designs.

An unregistered EU design is an advantage for applicants in industries that frequently produce a high volume of short-lived designs—such as footwear or clothing—over short timeframes, during which only a few of those designs may ultimately be brought into mass production.

An unregistered EU design is protected for three years from the date it is first disclosed within the EU. A design is considered disclosed in the EU if it has been published, exhibited at a trade fair, used in commerce, or otherwise made public in a way that the relevant circles in the industry operating within the EU could reasonably become aware of it. Therefore, a design made publicly available in the EU can benefit from legal protection without formal registration or the payment of official fees.

By contrast, unlike an unregistered design, a registered design of the European Union grants its owner the exclusive right to use the design. This means that registration enables the owner to prohibit any unauthorized use of the protected design by third parties. In the case of an unregistered design, the owner of the product has the right to prevent third parties from using it only if such use is clearly the result of copying the design. In this case, the creation of a similar product by a third party as a result of independent work will not be considered copying and, therefore, an infringement of the exclusive rights of the owner of an unregistered design.

Requirements for an application for industrial design registration in the EU

An application for the registration of an industrial design in the European Union must include images of the design(s). The application may cover multiple variants of the product, provided they all fall under the same class of the International Classification for Industrial Designs (Locarno Classification). Any of the 24 official languages of the European Union may be used as the language of proceedings.

The validity period of an industrial design registration in the EU is five years from the date of filing. The design holder may renew the protection for one or more additional five-year periods, up to a maximum duration of 25 years from the filing date. If the application documents are properly prepared and no objections are raised by the examination authority, the registration process typically takes between 2 to 4 months.

The validity of an industrial design may be challenged by third parties throughout the term of the patent by filing a corresponding request with the EU Intellectual Property Office. For more information on the cancellation of an industrial design patent, please read our article.

Thanks to its office located within the European Union (Vilnius, Lithuania), MSP is able to represent applicants directly before the EUIPO without the need to engage local European patent attorneys. This significantly reduces the cost of industrial design registration in the EU for our clients.

International Registration of Industrial Designs under the Hague System

When protection for an industrial design is required in multiple countries across different regions of the world, it is advisable to consider filing for international registration under the Hague System. This system allows applicants to register an industrial design in the countries or intergovernmental organizations that are members of the Hague Agreement by submitting a single application to the International Bureau of the World Intellectual Property Organization (WIPO). As a result, design owners can secure protection for their creations in multiple countries or regions simultaneously, while meeting only minimal formal requirements for the application.

To date, 80 intellectual property organisations are members of the Hague Agreement. International registration of industrial designs through this system is available only to applicants from countries that are parties to the Agreement.

The Hague Agreement also simplifies the management of design registrations by centralizing all administrative procedures through WIPO for the selected member countries or organizations. Actions that can be carried out directly through WIPO include, for instance, making changes to the registration record, recording the transfer of rights for a design (or part of it), and renewing the registration term, among others.

How to File an Application under the Hague System

International applications for industrial designs can be submitted either directly to the International Bureau of WIPO or to the applicant’s national intellectual property office, if permitted by the legislation of the respective country. In practice, however, nearly all international design applications are filed directly with the International Bureau, with most submissions made through WIPO’s electronic filing system available on its official website.

An international application may include up to 100 designs, provided that all designs, as in the case of EU applications, fall under the same class of the Locarno Classification. Applicants may choose to file in English, French, or Spanish. Each international application must include one or more representations (images) of the industrial design(s) and must designate at least one country or regional organization where protection is sought.

Term of Protection and Features of Registration under the Hague System

The initial term of protection is five years and may be renewed one or more times in additional five-year increments, up to the maximum duration permitted under the national laws of the specific country or regional organization designated in the Agreement.

It is also worth noting that, to facilitate access to the Hague System for design creators from the least developed countries, the official fees have been reduced to 10% of the standard amounts.

As previously mentioned, the Hague System also provides a pathway for obtaining protection for an industrial design in the European Union by designating the EUIPO as a participating organization where the applicant seeks design protection.

The average timeframe for obtaining registration in the EU via the Hague System is approximately six months. The maximum duration of protection in the EU through this system is 25 years from the filing date, provided that the registration is properly maintained and renewed on time.

MSP specialists will be pleased to offer you expert advice and a detailed cost estimate for registering your design in the EU or in other international jurisdictions upon request.