16 December 2007

Registered Community Designs: EC Accession to the Hague Agreement

On 1 Jan 2008, the EC (including the UK notwithstanding our wonderful PM's prior engagement at the Kirkcaldy Sea Otters' early morning Hogmanay swim around the Bass Rock or indeed to do just about anything to avoid showing enthusiasm for the EU) accedes to the Hague Agreement. This agreement is a bit like the Madrid Protocol and the Patent Co-operation Treaty in that it facilitates multiple applications for design registration from a single filing.

EC accession to Hague will not be anything like as far-reaching as its accession to Madrid since the only sizable countries outside Europe that are party to the agreement are Egypt, Indonesia, Morocco, Singapore and Turkey, but accession does present a protection option to British design owners that did not previously exist.

Even though HMG is not acceding to Hague in its own right, EC accession necessitates amendments to our law. S.11ZA (1) A) of the Registered Design Act 1949 will change from:

"The registration of a design (“the later design”) may be declared invalid if it is not new or does not have individual character when compared to a design which—
...........

(b) is protected as from a date prior to the relevant date by virtue of registration under this Act or the Community Design Regulation or an application for such registration"
to
"The registration of a design (“the later design”) may be declared invalid if it is not new or does not have individual character when compared to a design which—
...........
(b) is protected as from a date prior to the relevant date—
(i) by virtue of registration under this Act or the Community Design Regulation or an application for such registration, or
(ii) by virtue of an international registration (within the meaning of Articles 106a to 106f of that Regulation) designating the Community.”


with effect from 1 Jan 2008 by virtue of reg 2 of The Designs (International Registrations Designating the European Community) Regulations 2007 (SI 2007 No 2278). There are also slight amendments to the Community Design Regulations 2005 (SI No 2339), namely the insertion of a definition for "international registration" and it will be a defence to a threats action to prove the invalidity of an international registration.

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