The International Design

The Importance of an Expert in the Registration of an International Design

The filing of an International Design is a rather complex procedure which requires an attentive examination of the market where the entrepreneur wants to operate and the field where they are currently operating.

At Studio Turini, we have many years of experience in the field of the registration, renewal and protection of Design worldwide. For this reason, we advise our clients differently according to their needs.

The International Design is, as a matter of fact, a gathering of many national Designs therefore the choices made during the filing should take into account these particularities. At this stage, the advice of an IP agent is fundamental because to settle different needs is not often easy.

The filing of an International Design must be analyzed carefully and with extreme attention by an expert: someone who may advise the client on the right step to take on the basis of the evaluation of costs/benefits.

The Steps to Obtain an International Design

The 3 main points to understand in filing an international design application:

  1. What is an International Design?
  2. The registration procedure
  3. Norm of reference

What is an International Design?

The international design is not, as one may think, a design having effect all over the world. In truth, the term “international design” indicates a design filed by a single application in a multitude of foreign countries adhering to an international agreement on this subject. The international design system is ruled by the Hague Agreement that is composed of three different norms: the Geneva Act of 1999, the Hague Act of 1960 and the London Act of 1934.

Of these three norms, the first two are the ones currently used.

An international design has, for each designated country, the same value of a national model. The countries part of the so-called Hague System change constantly as new countries adhere to it.

The Registration procedure

The international design registration procedure managed by the WIPO (World Intellectual Property Organization) is rather complex.

According to the application exclusively of the 1999 Act, of the 1960 Act or of both of them – specific criteria establish which one should be used – there are three types of filing. 

The filing is made by a single application before the WIPO without the need of a previous filing in Italy. In case an Italian registration does exist, however, it is possible to claim the priority within 6 months.

For each country indicated in the application the international design has the same effect of a national registration. The contracting party has the power to reject the protection by sending to the WIPO a communication within 6/12 months from the publication of the design. Nevertheless, the owner can appeal against this decision.

The initial period of protection is of 5 years and the registration can be renewed for at least one/two periods of five years (obtaining thus a protection of ten/fifteen years) according to the rules of the single contracting countries which may allow a longer duration of the protection. The official languages of the protection are French and English. Many countries joined the Agreement and the list varies constantly.

The design can be single or multiple and it may include more designs by simply attaching to the application picture/s or drawings of the object to be protected.The cost varies depending on the number of the chosen countries and on the number and format of the attached design.

Norm of Reference

Hague Agreement Concerning the International Registration of Industrial Designs, version updated in 1960.
Hague Agreement Concerning the International Registration of Industrial Designs, version updated in 1999.

Giulia Mugnaini - responsabile Marchi&Design

Get in touch with our expert

Dott.ssa Giulia Mugnaini

Head of Trademark & Design Department

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