New Perspectives on Design Protection: The Impact of the Design Law Treaty

New Perspectives on Design Protection: The Impact of the Design Law Treaty

After the EU Design Reform, here is another piece of news from the design world: on 22 November 2024 the World Intellectual Property Organization (WIPO) adopted the Design Law Treaty.

The Treaty, which saw the light of day during the Diplomatic Conference held in Riyadh, Saudi Arabia, after almost 20 years of preparatory work, aims at global harmonization and simplification of part of the procedural aspects of design protection, in order enable designers, especially smaller designers as well as microenterprises and SMEs, to protect their creations in an easier and more cost-effective manner.

At present, design protection varies from country to country and therefore country-specific filing procedures must be followed, as design rights are territorial, limited to the country where protection is obtained. The Treaty aims to make these procedures more predictable and less complex.

Among the Treaty provisions that stand out for their impact on procedural simplification are the following:

• A maximum list of indications or elements that design applicants must submit with a design application is set, with the explicit prohibition of adding further requirements.

Establishing a finite list of elements will help form a predictable framework for design protection procedures and reduce administrative burdens.

• Applicants are allowed to choose how to represent the design in an application, i.e. by drawings, photographs, videos (the latter only if allowed by the specific competent IP office) or a combination thereof, in colour or black and white; the use of dotted lines, for portions that are not part of the design to be protected, and shading is also allowed; also, there is no minimum or maximum number of views required.

The simplification introduced is obvious and will allow applicants not to have to worry about having an application rejected due to specific requirements of individual IP offices.

• There are established sufficient minimum requirements for obtaining a filing date, i.e. an indication, even implicit, that the submitted elements represent an application, information to identify and contact the applicant or their authorised representative and a sufficiently clear representation of the design.

This ensures that applicants will be able to obtain a filing date without delay, even if certain formalities are dealt with later, without the risk of having the filing date postponed.

• There is a grace period of 12 months after the first disclosure of the design, during which such disclosure does not affect the validity of an application for that design.

Thanks to this provision, applicants will be able to ‘test the market’ for 12 months before applying for a design, without worrying about grace period provisions varying from one jurisdiction to another.

• Applicants are allowed to keep their designs unpublished for at least six months after obtaining the filing date.

Deferring publication will allow for greater control over the timing of the initial release of the product covered by the design. Having a common minimum period for such deferral will ensure that the benefits of deferral are not nullified by publication in a country with a shorter deferral period (or no deferral at all).

• Measures are provided to remedy failure to meet a deadline or other omissions and errors (e.g. claiming priority).

Such measures will advantageously prevent applicants from irreparably losing their rights due to such failures.

• The procedure for requesting renewal of a design registration is simplified by setting a maximum list of indications that a renewal request must contain in order to obtain renewal, with the explicit prohibition for IP offices to request further indications.

Again, as with first filing, establishing a finite list of indications for design renewal will help to form a more predictable framework and reduce administrative burdens.

• The introduction of electronic filing systems for designs and the electronic exchange of priority documents is promoted, with a view to procedural simplification and relief of administrative burdens.

The number of design filings underwent a remarkable increment worldwide in 2023, Italy ranking fourth for the highest number of design applications - after China, USA and Germany - but first for the growth rate of such applications among the top 5 applicant countries.

With the increasing acknowledgement of the importance of designs in global economy, the hope is that the new Treaty will allow designers to achieve even better protection and safeguarding of their creations all over the world.

The Treaty requires ratification by at least 15 WIPO countries to enter into force.

Keep following us on our channels for updates on the entry into force of the Treaty and other important news from the world of Intellectual Property.