With the accession of Russia to the Hague Agreement Concerning the International Registration of Industrial Designs, protection of designs in Russia will soon be possible with relatively little effort. For companies that are already active in the region or consider entering that market, this provides an attractive opportunity to expand their intellectual property rights portfolio. In any event, this development of the international intellectual property rights scene gives reason to critically review existing intellectual property portfolios.
International protection of designs
Designs, i.e. aesthetic creations such as shapes, patterns etc., can be protected through registered rights similar to trademarks. The holder of a design right has exclusive rights – for a limited time – to the design and can exclude other companies or individuals from using identical or similar patterns. As with other industrial property rights (trademarks, patents), such protection is granted country-specific. Although a uniform right (the Community Design) can be obtained for the territory of the EU, in all other countries protection must be sought at each country’s respective competent authority, individually. For this process, companies or individuals must engage local attorneys for help and instruction – a potentially time and cost-intensive process.
To ease the process for companies and private individuals to obtain international protection for their intellectual property, various international conventions exist. These allow, for example, a German company (with the help of a local attorney) to request protection for industrial property rights in other countries without having to work directly with the local authorities in those countries. The registration procedures can be initiated and controlled locally.
The Hague Agreement Concerning the International Registration of Industrial Designs is one such international convention. It facilitates the international protection of decorative creations. Currently, this agreement exists between 66 countries and country groups (such as the European Union, the Union of African States and the Benelux countries).
Accession of Russia to the Hague Convention
The Russian Federation passed a law this year to join the Convention. The law will enter into force in October of 2017. From then on, designs in the Russian Federation can also be applied for from Germany (and other member states of the Hague Convention). The Hague Convention has thus once again become more attractive. Companies that are already active in Russia or who consider expanding their business activity now have a comparatively easy means to protect their designs in Russia beyond the protection they may have from potential trademark registrations.
Opportunity to review your IP portfolio
A review of your intellectual property portfolio should be conducted regularly and routinely to identify and close any gaps of protection as well as to optimize the portfolio. Changes in the legal landscape, such as the one presented here, provide an additional reason to do this.
This routine check should include:
- Core data: Are register numbers, deadlines, payment deadlines, and the classes of the trademarks and designs correct? Are there any deviations in the data stored at the company with the official registry data?
- Deadline checks: Were all deadlines including those for extension of coverage to other jurisdictions properly recorded, and were the decision makers informed about the deadlines with sufficient lead-time?
- Analysis: Are there gaps in the protection in certain countries or with regard to content? Does anything in the portfolio need to be registered and/or are amendments to the portfolio necessary? Are there redundant rights? Can the portfolio be slimmed down to save money?
- Documentation: Have any coexistence agreements, delimitation agreements, or other contracts entered into or concluded concerning intellectual property rights been recorded and documented; is there any proof of use, and is such proof of use linked to the intellectual property rights such that they can be processed quickly?
With a growing and internationalized portfolio, one can easily lose track of it all. Resources and money are often wasted and the risk that the company only creates a patchwork of protection will continues to grow. This threatens the company’s commercial impact, the value of the portfolio, and thus the value of the company itself.
If property rights management has so far been handled only through semi-professional “home-grown” software or even through manually managed lists, professionalization is urgently called for. If, however, the intellectual property portfolio is already professionally managed with an appropriate database solution, potentially even through external counsel, any necessary analyses can be carried out quickly and easily. The intellectual property portfolio will then be or become a powerful and versatile tool for the company.