Applying for Registered Design Right
Applying for registered design right in Finland
According to the Finnish design right law, obtaining a design right requires registration of the design. A written application is filed with the registration authority, with the illustrations of the design for which the protection is sought appended thereto. The application shall also include the details of the proprietor and the creator, the title of the design, and the classes in which the design is to be registered. One application may contain several designs, provided that the entered products belong to the same main class according to the used classification.
The authority, i.e. the National Office of Patents and Registration of Finland, checks that the application fulfils the formal requirements and that the design is novel and unique. If the patent office finds no obstacles for the registration, the design is advertised in the official design right gazette. Starting from the date of the advertisement, an opposition period begins, during which anyone can file an opposition against the design. In case no oppositions are filed, the design is registered. On the other hand, if an opposition is filed, the prosecution of the opposition begins.
A Finnish registered design right remains in force for five years, and it may be renewed four times for five years at a time. The maximum protection time therefore comprises 25 years. However, if the design is part of a multipart product and its purpose is to fix the product back to its original state (a spare part), the protection time is at most 15 years.
Applying for registered design right outside Finland
A design right is a geographically limited right. This means that a design right application filed in Finland may only lead to a Finnish design right registration, which provides its holder the right to deny action in Finland. If it is desired to expand this right to relate to other countries, design applications must be filed in them either nationally or trough some supranational system.
Similarly to patent applications, priority may be requested based on a design application filed in one country for a design application filed in another country. In design applications, the priority period is six moths.
National registered design right outside Finland
Registered design right may be applied for in several countries. In some countries, there might be special requirements for applications or the designs that the applications relate to. It is therefore advisable to consider well in advance which are the countries in which one wishes to apply for a design right.
Registered community design
The registration of community designs in The Office of Harmonization for the Internal Market (OHIM) of the European Community started on April 1st, 2003. One community design application is sufficient to provide a registered design protection over the entire European Community, i.e. in all the member states of the European Community, because the community design is by nature undivided. This means that the design right is both created and terminated at the same time in the entire area of the European Community. The community design right gives the holder the right to deny the production on unregistered designs in all the member states of the EC and also to deny illegal import to the EC area.
In contrast to a Finnish national design right application, OHIM does not check during the handling of the application whether the design for which protection is sought is novel and unique, in other words they only perform the registration of the design.
Another difference to the Finnish national design right registration is that there is no opposition time, meaning that anyone may, at any time, file with OHIM a request to declare the registration invalid.
International design registration application
By filing an international design right application, one may, by a single application, be able to register the design through the international design right application system, i.e. in all the countries that have joined the Hague Convention.
About 30 countries belong to the international design registration system. For the time being, Finland has not joined the Hague Convention.
This system may only be used by the citizens of the member states or by such physical or juridical persons who’s domicile or place of residence is in one of the member countries of the Hague Convention or in a country that belongs to an organization that is a member of the Hague Convention.
The European Community joined the system on January 1st, 2008, with the consequence that a registered community design is now obtainable through the international design registration system. As the European Community joined the system, it became possible for Finnish citizens and companies to use it.
The application relating to an international design registration is filed with WIPO either directly or through the National Board of Patents and Registration of Finland. Unlike with the registered community design, in an international design registration application the countries for which protection is sought are named. The entire application procedure can be taken care of by filing a single application.
Unregistered community design
The Community Designs Regulation also mention an unregistered design. An unregistered design is a form of protection that became effective on March 6th, 2002. Obtaining protection does not require registration, but the design shall in any case fulfil certain requirements enacted in the Community Designs Regulation. The time of protection of an unregistered design is short – only three years from the date that the design became public. Also its scope of protection is fairly limited, since in practice protection is only obtained against copying. In infringement situations, the holder of an unregistered design right has to prove both that the infringing party is aware of the unregistered design and that the infringing party has used this as an example when creating the imitation.
