Updates

Lower Fees for Filing UK Registered Design Applications

13 July 2016

From 1 October 2016, it is likely that the costs associated with filing UK registered design applications will be significantly reduced.
 
Filing fees will be based on the number of applications filed: the more applications, the greater the saving.  For example, the fee for filing one design application will be reduced from £60 to £50; but it will be possible to file up to ten designs as a multiple application for a  single official fee of £70 (currently £420) and up to 20 designs for a single official fee of £90 (currently £820).  Renewal fees will increase every five years of the term of protection (as they do now) but, overall, will also be reduced.
 
In order to benefit from these greatly reduced fees, applications must be filed electronically.  Our firm is readily able to handle this provided we receive design application documents from our clients in a suitable format.
 
This proposed fee structure should encourage businesses to file bulk applications in order to maximise the cost benefit.  Since designs do not have to be similar to one another in order to be filed as a multiple application, the cost advantages should be wide-reaching.  In other words, it is possible to group together very different designs falling within different classes of the Locarno classification system within a multiple application as long as there is a common applicant.
 
Filing in Non-UK Jurisdictions
 
If you are considering design registration in other jurisdictions, it may be worth filing initially in the UK especially once the new lower fees have been introduced.
 
Once a UK design application has been filed it is then possible to file applications in other jurisdictions such as the EU area and the US for example, within a six month priority period after the date of filing the UK application.  Changes are also on the horizon regarding the routes available to obtain design protection in other countries, following the filing of a UK application.  Specifically, the UK Government has announced that the UK will be acceding to the Hague Agreement Concerning the International Registration of Industrial Designs.  There is, however, currently no timetable for accession.
 
The Hague Agreement makes it possible to obtain design protection in many jurisdictions, based on the filing of a single application.  As well as providing a registration system with standard fees and procedures, the Agreement enables applicants to register their designs in any contracting state, by filing a single application at the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva.  Jurisdictions such as the US and the EU are among the existing contracting states.
 
Post-Trunki
 
As we explained in our recent Newsletter, following the judgement in the UK case of PMS International Group Plc v Magmatic Limited [2016] UKSC 12 (“Trunki”) in order to obtain full protection for your registered design it may be important to file a multiple application including a simple line drawings of the shape only, drawings with shape and surface decoration included, and very detailed drawings in colour, for example.  The number and format of applications will vary depending on the design in question.  This advice has now been endorsed by the UK IPO in its recent Guidance published on 1 June 2016, in which it states:
 
For applicants seeking absolute assurance that different aspects of their design are protected, and/or for those who are uncertain as to how best represent their design (particularly where different representation types may disclose different elements), the ‘multiple application’ route can be particularly useful.  It provides applicants with a simple means for submitting different representations in one action, and is more cost effective than submitting multiple separate applications.
 
The expected forthcoming reduction in fees, particularly for filing multiple applications, will make it much more financially viable to follow the new guidelines.  If the UK applications are to be used as a basis for applications in other territories, it would be possible to choose which applications to go forward with in order to control costs.
 
For further information, please contact Helen Johnstone.  Helen is a partner in our Designs and Engineering Department. 

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