Industrial design registration

ADVANTAGES IN COMPARISON WITH SPANISH NATIONAL DESIGNS

• The application of a single legal system: The application of a single legal system to all Community Designs and Models (CDM) provides solid, uniform protection in all countries of the European Union.
• Simplification of the procedures: EU registration provides the possibility of submitting a single application, a single language for the application, a single administrative centre, a single dossier to be processed, and consequently, a single payment.
• The possibility of submitting multiple applications: The possibility of including several Drawings and Models in a single application, e.g. a complete series of similar products.
• The possibility of deferment: The possibility of deferring the publication of the Drawings and Models for a maximum of 30 months, to prevent the competition from being aware of it.
• Exclusive rights of use: Awarding the owner the exclusive right to use it and to prohibit its use by third parties without their consent.

BREXIT

This registration system brings about the same effects as a national registration application in the country where it is filed, and in this sense it is also governed by the legal regulations in force in that country.

By means of this system you are provided with the POSSIBILITY TO PROTECT YOUR INDUSTRIAL DESIGN IN ANY COUNTRY WORLDWIDE.

Alvamark, being a firm that has specialised in Industrial Property since 1926, has correspondents in all countries worldwide, enabling it to carry out any procedure in the country required for the correct management of our clients’ Industrial and Intellectual Property.

The registration of international designs falls within the framework of an International Design Registration system for countries belonging to the Hague Agreement, the Geneva Protocol and the Geneva Act.

ADVANTAGES

• A simultaneous application for 55 countries or regions.
• The possibility of drawing up the application in a single language.
• A single fee is paid, in Swiss francs.
• The simplification and unification of procedures such as the formal examination and publication, in order to obtain a registration in each of the designated countries with the same rights and obligations as if it were a Spanish national design.

PERIOD OF VALIDITY

The international registration will have an initial validity period of five years, commencing on the date of the International Registration. The registration can be renewed for additional periods of five years up to the completion of the period established by each legislation of each designated contracting party.

What is an Industrial Design?

An Industrial Design is understood to be the appearance or decoration of the entirety or a part of a product, derived from the characteristics of the lines, shapes, contours, colours, textures or materials of the product itself or of its decoration, and which renders it visibly different from another, without taking into account its technical or functional characteristics. As a general rule, an Industrial Design may consist of:

• three-dimensional elements, such as the shape of a product
• two-dimensional elements, such as decorations, figures, lines or colours of the product
• a combination of elements such as those mentioned above

What is the difference between an industrial design and a utility model?

In utility models protection is given to technical inventions that resolve technical problems, while in the case of industrial designs only the external appearance of the product is protected. The scope of protection of an industrial design does not cover the characteristics dictated exclusively by its technical function.

What is the Locarno Classification?

The Locarno Classification is an International Classification for Industrial Designs. The object of the classification is, above all else, for search purposes, not as protection in itself.

How can an industrial design be protected with effect in Spain?

Protection in Spain can be obtained in various ways:

• The domestic route. The application is drawn up following the requirements set out by Spanish Act 20/2003, of 7 July, on the legal protection of industrial design.
• The EU route. There exists the possibility of obtaining a Community design by means of a single application sent directly to the EUIPO. Said Design is, for all intents and purposes, unique, being granted, rejected or cancelled throughout European Union territory
• The international route. With this procedure, governed by the Hague Agreement comprising the Acts of 1934, 1960, 1967; the Geneva Protocol of 1975 and the Geneva Act of 1999, it is possible to submit a simultaneous application for 55 countries or regions.

What is a Community Design?

A registered EU drawing or model grants its owner the exclusive right in all the European Union Member States and prevents its use without their consent. In the event that the European Union expands in the future, the validity of any EU drawing or model registered or requested will be automatically extended to the new enlarged territory of the EU, with no need to submit an application or pay any fee. The unitary nature of registered EU drawings and models, identical throughout the Member States of the EU, guarantees the simplicity of the procedure, due to the existence of:

• a single application;
• a single language for the submission;
• a single administrative centre;
• a single dossier to be processed;

Applications may be submitted directly to the OHIM (in person or via the online e-filing service), or alternatively at the Spanish industrial property offices. The cost of registering an EU drawing/model is 350 euros, and the fees applied are for registration, publication and deferment, and vary according to the number of drawings or models included in the application. The registered Community Design is protected initially for a period of five years, renewable for five-year periods up to a maximum of 25 years, starting from the date of application.

What is the International Register of Industrial Designs?

International design falls within the framework of an International Design Registration system for countries belonging to the Hague Agreement comprising the Acts of 1934, 1960 and 1967, the Geneva Protocol of 1975 and the Geneva Act of 1999. By means of the Hague Agreement the simplification and unification of a series of procedures is achieved, such as the formal examination and publication, in order to obtain a registration in each of the designated countries with the same rights and obligations as if it were a Spanish national design. With a single application, in a single language and paying a single fee in Swiss francs, protection can be obtained in a plethora of countries. Besides, this protection can later be extended to other member countries of the system, at any time, with a territorial extension application. It is also worth noting that an International Design Registration is easier to process than several Spanish national designs, both in the case of renewal and in changes of ownership or representation. In short, it is easier to obtain protection in other countries and also to process said protection in the future. Individuals or legal entities with Spanish citizenship or residing in Spain or that possess a real and effective industrial or commercial establishment in Spain may apply for an International Design Registration at the SPTO. In the event of applying for an International Design Registration at the SPTO, this entails a transfer fee that is independent from the fees to be paid to the International Office. The International Registration will have an initial validity period of five years, commencing on the date of the International Registration. The registration can be renewed for additional periods of five years up to the completion of the period established by each legislation of each Designated Contracting Party. On the WIPO website you will find more detailed information on this system Wipo

How is a design protected abroad?

DIRECTLY, country by country, submitting the corresponding applications in each of the countries where it is desired for the design to be registered. By means of an INTERNATIONAL DESIGN. With a COMMUNITY DESIGN

What is required to apply for an Industrial Design in Spain?

The application form, together with the receipt for payment of the fees, accompanied by a drawing of each design. Between 1 and 7 perspectives or views may be included, and these may be grouped into a single drawing whose dimensions shall not exceed 26.2 x 17 cm. This drawing should be attached or printed on separate sheets, or on the page provided for this purpose of the form made available to the applicants.

How many variants of a single design can be submitted in an application?

The registration application may comprise numerous designs, up to a maximum of 50, provided that they refer to products belonging to the same class of the International Classification of Industrial Drawings and Models. In the event of there being over 50 variants, new applications should be made.

Can designs that include phrases or words be submitted?

“Verbal elements” are accepted, such as the name of the company or of the product; however, this does not entail protection of the words.

How long does the procedure take?

Industrial Design registration applications lodged at the SPTO are examined to verify compliance with the requirements for acceptance for processing. In the case where the application has no defects in form or, where applicable, the irregularities have been resolved, the form and legitimacy study will be conducted, as will the Ex Officio examination. If the application has no defects, it will be granted immediately and will be published, initiating a two-month term for third parties to allege lack of novelty or originality and to file opposition so that it will be rejected.

How long does the protection of an industrial design last?

Registration of the design is granted for five years as from the date of submission of the application, and can be renewed for one or more successive periods of five years up to a maximum of 25 years.

What is an unregistered design?

The entry into force of European legislation on Community design caused the appearance of the unregistered design. Thanks to this concept it is possible to obtain the protection of a design for three years after it has been made accessible to the public, with no need to carry out a registration.

What cannot be registered as an industrial design?

Designs contrary to the public order and decency cannot be registered. According to the indications of the Paris Union Convention, designs entailing an undue use of coats of arms, flags and other emblems, symbols or denominations of international, intergovernmental organisations are not registrable, likewise the coat of arms, flag and other emblems of Spain, of its self-governing communities, municipalities, provinces or other local bodies, unless duly authorised. Neither is it possible to register designs including a trademark or other distinguishing mark previously protected in Spain and whose owner has the right to prohibit the use of the sign in the registered design.

What are the stages for the granting of a design in Spain?

ACCEPTANCE FOR PROCESSING.– The application submitted will be allotted a day, hour and minute of filing and a number that will identify the dossier and which will never be modified. EXAMINATION OF SUBSTANCE/EX OFFICIO.- Upon receipt of the application or the rectification document, the competent body will examine it to verify whether it features the minimum data required to obtain a submission date, whether it fulfils the requirements of substance listed in Articles 1 and 2 of the Regulation for the execution of Spanish Act 20/2003; that the number of designs in the multiple applications does not exceed 50, and if the receipt for payment of the fees has been provided. It is also verified ex officio that the applicant is legally empowered to be the owner of a design registered in Spain.

DEFERMENT OF PUBLICATION.– Deferment of the publication of one or several designs can only be requested in the application, for a period of 30 months. In the case of multiple applications, deferment of the publication may refer to all or only some of the designs included therein; it should be indicated clearly in the application for which designs it is requested.

Once the design has been registered, the owner can request publication before said term expires. The representation of a design for which deferment of publication has been requested will not be accessible to the public; likewise information that might reveal the appearance thereof, while the registered design has not been published.

RESOLUTION OF THE GRANTING PROCEDURE

On conclusion of the term foreseen for responding to the notification of reasons for suspension of the procedure, whether the applicant has responded or not, the SPTO will resolve, stating grounds, awarding the total or partial granting, or the rejection of the design registration or registrations, or considering the application to have been totally or partially withdrawn. This decision, which will be made known to the applicant, does not close the administrative route, and an appeal may be lodged before the Director of the Office within one month of its publication in the Official Industrial Property Gazette (B.O.P.I.), this prior appeal being mandatory in order to turn to the contentious administrative route.

OPPOSITION PROCEDURE

The term for the filing of oppositions shall be two months, as from the date of publication of the concession. The document of opposition must be submitted to the SPTO and must bear the data stipulated in Article 25 of the Regulation for the execution of Spanish Act 20/2003. Oppositions can only be founded on one or more of the reasons foreseen in Article 33 of Spanish Act 20/2003. The following may file an opposition:

• a) any person, alleging that the design breaches any of the requirements for protection set out in Articles 5 to 11 of Spanish Act 20/2003.
• b) any person who is the lawful owner of prior signs or industrial or intellectual property rights.

When the opposition document has been accepted for processing and, where applicable, any irregularities have been resolved, the oppositions and the evidence submitted will be transferred to the owner of the registered design, so that within two months he may file his allegations and, when applicable, he mat modify the representation of the design or eliminate the element causing the objection, provided that said modification does not alter substantially the design as it was granted. Upon receipt of the response to the oppositions, or upon conclusion of the term for its filing, the SPTO will pronounce a reasoned ruling, accepting the entirety or a part thereof, or rejecting the oppositions filed.

The acceptance of an opposition entails the cancellation of the design(s) registered. This decision, which will be made known to the owner of the registered design, does not close the administrative route, and an appeal may be lodged within one month of its publication in the Official Industrial Property Gazette (B.O.P.I.), this appeal being a preliminary in order to turn to the contentious administrative route.

What cannot be registered as an Industrial Design?

Designs contrary to the public order and decency cannot be registered. According to the indications of the Paris Union Convention, designs entailing an undue use of coats of arms, flags and other emblems, symbols or denominations of international, intergovernmental organisations are not registrable, likewise the coat of arms, flag and other emblems of Spain, of its self-governing communities, municipalities, provinces or other local bodies, unless duly authorised. Neither is it possible to register designs including a trademark or other distinguishing mark previously protected in Spain and whose owner has the right to prohibit the use of the sign in the registered design.

What is an unregistered design?

The entry into force of European legislation on Community design caused the appearance of the unregistered design. Thanks to this concept it is possible to obtain the protection of a design for three years after it has been made accessible to the public, with no need to carry out a registration. However, this protection is much weaker, as it only protects its owner against exact copies of the design.