Icelandic entities can apply for design registration in other countries. One way to do this is to apply to the World Intellectual Property Organisation (WIPO). An international application for design registration can be filed in over 90 countries. The application is filed using the online application process on WIPO’s website or with the ISIPO.
Should I apply?
Before the international design registration process commences, it is important to investigate whether an identical or similar design is already registered in the countries where protection is being sought. If there is a previous design, this may prevent the registration from taking place. You can search for foreign designs in the Global Design Database or the search engines of the intellectual property offices of the relevant countries.
When can I apply?
An international application can be filed at any time. There is no obligation for a previous application in Iceland.
The filing of an application here triggers a so-called priority right, meaning that, for a period of six months from the filing date, an international application can be filed with the same filing date as in Iceland. As a result, the application will have priority over identical or similar designs that applications are filed for during this period. This means that no time will be lost waiting for the initial response to the Icelandic application.
How do I apply?
The registration application is filed using the online application process on WIPO’s website. The ISIPO may also act as an intermediary in international design registration applications.
The costs of an international application can be estimated by using the WIPO fee calculator. This fee is based on factors including the number of countries selected and the number of multiple registrations and images. In addition to the application fees to WIPO, an administration fee is paid to the ISIPO in accordance with the Office’s tariff.
Once the administration fee has been paid, the ISIPO reviews the application with reference to the base application/registration. If any comments are made, the applicant will receive a notification to that effect and a deadline for making improvements, after which WIPO takes over the review of the application, including the review of multiple registrations and of images. WIPO will give the applicant time to resolve any comments that they may make, with the ISIPO acting as intermediary.
What happens once I have applied?
When the formal conditions have been met and the application has received an international WIPO number, the application is forwarded to the intellectual property offices in the designated countries, which will then make an independent decision on whether to register the design. If an application is denied, the applicant is notified and given a chance to respond. All deadlines in the process must be carefully observed so that the application does not lapse.
Designation of more countries
No more countries can be added to the international application after the application has been filed. You can only file a new application for the countries you wish to add and the same priority right can be used again if the application is filed within six months of the initial filing date.
If someone is using a design overseas, it is good to keep in mind that in some countries design rights are established through use. It is therefore advisable to examine the laws and regulations in each country if this may apply.
WIPO must be notified of any changes to a design. These include transfer of ownership, restriction of images, appointment of a representative etc. The ISIPO can receive most types of forms and forward them to WIPO, but indicates that many of these forms can now be sent online to WIPO.
How do I keep track of my registration?
Information about registrations can be accessed in WIPO’s Global Design Database. If a design is registered in any of the designated countries, the registration will have a term of five years, after which the registration can be renewed with WIPO.
In a nutshell:
Applications can be filed in over 90 countries
through the ISIPO
Protection from the first filing date
if an application is filed within six months
Design registration must be renewed
with WIPO every five years