A step forward for international designs/Hague design registrations

A registered design can be filed in two ways: nationally via the local registry or internationally via the World Intellectual Property Office ("WIPO").

The United Kingdom Intellectual Property Office ("UK IPO") has recently updated the way it assists with international designs / Hague design registrations – see further information below.

National design registration vs Hague design registration

The UK IPO is the UK registry that manages and issues nationally filed design registrations.

Where designs are filed internationally via WIPO they are often referred to as 'Hague design registrations' since they are filed under the Hague Agreement, which enables the registration of international designs in various contracted member countries and intergovernmental organisations. Hague design registrations are managed centrally via WIPO rather than directly via each national office/registry.

Hague design registrations before February 2024

After applying for a Hague design registration at WIPO, WIPO completes its formal examination procedure before later publishing the design in its International Register. Thereafter, the national office/registry of the designated contracting party will have either 6 months or 12 months to conduct its own substantive examination procedure and issue a refusal of protection, if relevant. In the UK, the 6 month period applies.

Some national office/registries issue a statement of grant of protection ("SGOP") to the design owner after its examination procedure to confirm that it has approved the design and that the design is protected in its territory. Before February 2024, where Hague design registrations designated the UK, the UK IPO did not issue a SGOP and it would only issue communication if there was an issue with the UK designation. Therefore, it was never abundantly clear if and when the UK IPO granted protection over the design.

Hague design registrations now

Since February 2024 the UK IPO had been trialling the issuance of SGOPs. After receiving positive feedback, as of 29 August 2024, the UK IPO has confirmed that it will issue a SGOP in relation to Hague design registrations that designate the UK.

What if I am already a design owner of a Hague design registration that designates the UK?

Helpfully, for design owners of Hague design registrations that are already protected in the UK, the UK IPO have pre-emptively issued a general SGOP which can be found here. If a specific SGOP is required that identifies your particular Hague design registration, you can request one by emailing the UK IPO.

If you require any assistance in relation to Hague design registrations or obtaining a SGOP, please do get in touch.

Our thoughts

Bethany Wheeler-Fowler, Associate, says: "This is a positive step in the right direction for the UK IPO and brand owners. Importantly, this new approach will streamline the UK IPO alongside other registries and the International Registration procedure for trade marks where it provides SGOPs already.

As the issuance of SGOPs will provide design owners with a greater certainty as to when their design is protected and when it can be enforced, policing and enforcement should be easier too."