When applying to register a design, most applicants will eventually want to secure protection in many places around the world. However, it is typical to begin with a single application in one country or region, and follow up with a broader family of corresponding applications near the end of the six-month priority period to defer these costs.
We usually recommend depositing your first application in the UK or EU. The UK Intellectual Property Office (UKIPO) and EU Intellectual Property Office (EUIPO) each provide relatively cheap options and include robust formal examination. However, as explained below, there are a number of reasons you might pick one over the other.
A registered design application containing a single design in the UK incurs an official fee of just £50. Filing up to ten different designs in the same application at the UKIPO costs a mere £70 in official fees. Up to 50 designs costs only £150.
At the EUIPO the official fees are €350 (around £300 at current exchange rates) for a single design, a further €175 (around £150) for each additional design in the same application up to a total of ten designs, and a further €80 (around £70) for each additional design over ten.
From a cost perspective, the UK is clearly cheaper if your main goal is to keep the initial spend to a minimum.
Different product types
Both EU and UK registered design applications can contain a number of different designs. However, at the EUIPO, all of the designs in a single application must be for the same type of product (i.e. Locarno classification). The UKIPO has no such requirement – as long as all of the designs have the same applicant, they can be filed in the same application.
If you want to file your first application for a range of different product types without needing to divide it later, then the UK is a good choice.
Both the EUIPO and the UKIPO permit the use of disclaimers to restrict a registered design to only part of a product. However, disclaimers in the EU can only be visual in nature (e.g., the use of shading and broken lines to claim only part of a product's design), while the UKIPO permits written disclaimers (e.g., "No claim is made for the colour shown in the drawings").
Although a written disclaimer can usually be reproduced in visual form, the time pressures on a first filing might mean that there is not enough lead time to have the appropriate drawings prepared. Therefore, if you need or want to use a written disclaimer in your first filing, then you should submit it at the UKIPO.
A lesser-known complication of a UK first filing is that the UKIPO currently only provides hard copies of certified priority documents at a cost of £30 per copy. Each individual design will require a separate priority document, meaning the costs for obtaining the necessary documents from the UKIPO can quickly stack up if you are filing multiple designs in priority-claiming applications around the world.
In contrast, the EUIPO provides digital certified copies for free.
The EUIPO also uses the WIPO DAS system to share priority documents automatically with participating offices, so you may not even need to obtain certified copies for many of your later applications. The UKIPO is not currently a member of the WIPO DAS system for designs but, given that they already use it for patents, we expect they may expand the service to designs soon.
If you have lots of different designs in your application and you plan to file several priority-claiming applications, the initial cost savings from the UKIPO's low official fees can quickly be cancelled out by official fees for the considerable number of certified copies that will need to be ordered.
Registered design applications can be examined and published in a matter of days, or even hours. In some circumstances, you might not want your design to be published that quickly – for example if the product has not yet been launched. Helpfully, both the UKIPO and EUIPO allow requests for deferred publication.
The EUIPO charges €40 (around £35) for deferring publication of the first design in an application and €20 (around £18) and €10 (around £9) for designs 2-10 and 11+ respectively. This amount must be paid on filing the application and the publication can then be delayed for up to 30 months from the filing date.
The UKIPO charges £40 for deferring publication of the first design and a flat fee of £20 for each further design. However, this fee is only payable at the time of the request for publication, which can be up to a year after the filing date.
If you want to defer publication of your design(s) for longer than a year, then the EUIPO is the best option.
Both the UKIPO and the EUIPO have their merits for filing your priority-founding registered design application but, ultimately, which you choose should be taken on a case-by-case basis depending upon your business aims and priorities. We can help advise you on the best option in your circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.