Applying for design registration in other countries
It is wise to register your design in all the countries where you are thinking about using the design commercially. However, the more countries in which you apply for protection the more expensive it becomes.
Whether you choose to start with an application in Norway or to apply directly in other countries, you have the following options:
- Starting in Norway
- Applying in each individual country
- Applying through the Hague System
- Applying for an EU design
- Applying in countries outside the EU which are not members of the Hague system
- Renew a design registration
You can first file an application to the Norwegian Industrial Property Office for design registration in Norway. Then, within six months, you can file an application claiming priority from Norway. Priority means that your design takes precedence over later applications for the same design.
In this way, you have your application processed in Norway and you can receive assistance in correcting any errors and deficiencies before filing applications for other countries. This gives you more time to decide in which other countries you wish to register the design. The drawback is that it may become a little more expensive, because you will have to pay national fees to the Norwegian Industrial Property Office in addition to international fees.
Even if your application has not been fully processed at the Norwegian Industrial Property Office, you must file your application in other countries within six months if you wish to have priority from Norway. It is important that you heed the time limit of six months yourself.
Apply for design registration in Norway
In some cases it may be simplest to apply directly in each individual country. For example, if your market is Norway, Sweden and Denmark, it may be easiest to start by filing an application in Norway, and then apply in Sweden and Denmark, claiming priority from the Norwegian application.
If you want to register your design in many countries, you can send an application for international design registration via the Hague System. With an application of this kind you can obtain design registration in more than 75 Member Contracting Parties covering 91 countries and unions, including Norway.
Fill out the electronic application form eHague which you will find on the website for the World Intellectual Property Organisation (WIPO). Designate the countries in which you wish to obtain protection in the application.
The application must be completed in either English, Spanish or French. All the fees have to be paid directly to WIPO in Swiss francs. The application will be processed in each individual country in accordance with its national legislation.
- List of all the members of the Hague System (on the WIPO website)
- Hague System fee calculator (Fee Calculator - on WIPO website)
- Hague System application form - eHague (on the WIPO website)
- Read more about the Hague System (on the WIPO website)
- Apply for international design registration via Norwegian Industrial Property Office
Do you need help in applying through the Hague System?
Using an agent or attorney to file an international design application to WIPO is not a requirement. It may however be wise to obtain professional assistance if you are not familiar with design law or if you do not have much time to keep track of the application process.
How can an agent help you?
By filing an application for an EU design, you can obtain registration in all the member states of the EU. The EEA countries are not covered by this. Anyone who is resident in Norway or has a business in Norway can apply for an EU design.
The application has to be sent to the European Union Intellectual Property Office (EUIPO), located in Alicante (Spain).
More information on the EUIPO website
Do you need help in applying for an EU design?
You do not need to use an attorney or agent to file the application. However, we recommend that you use an attorney throughout the process, including filing the application. A Norwegian attorney can help you throughout the whole process at the EUIPO.
Norwegian representatives can represent clients before EUIPO
If you wish to apply for design registration in countries outside the EU which are not members of the Hague system, you must apply directly to each country. It may be advisable, and in most cases necessary, to use a professional representative. You can either contact an agent from the country in question, or use a Norwegian representative who has connections in that particular country or has a good knowledge of local regulations.
An international design registration filed via the Hague system must be renewed directly to WIPO. This also applies to a Norwegian registration if you have chosen Norway via the Hague system.
Fees for renewing design registrations vary from country to country. To find out how much you have to pay in other countries, contact your patent attorney or the patent office in the country in question.
The WIPO website offers two methods for renewing your registration:
- Electronic renewal - International designs E-Renewal System
- Form DM/4 - Renewal of the international registration.
If you publish your design for the first time in an EU country (for example through marketing, sales or at an exhibition), you obtain automatic protection for three years throughout the EU for what is known as an unregistered design. This only provides protection against deliberate copying. To enforce the right of an unregistered design, you must prove in a lawsuit that you have such a right to the design. If the other party can prove that they were not aware of this right, you will not be able to prevent them from exploiting the design commercially.
See information from EUIPO (the design authority for the EU - European Union Intellectual Property Office).