Where the UK is designated, following publication of the underlying Hague design registration, the UK design registry (the United Kingdom Intellectual Property Office, or UKIPO) will then perform an assessment to determine whether it considers the UK designation of the Hague design registration to be allowable. To the extent it considers the UK designation to be allowable, it will issue a “statement of grant of protection” notice. Otherwise, if the UK design registry perceives there to be an issue with the UK designation in any way, it will issue a “notification of refusal” which will typically set a two-month period in which to respond.

The UK design registry will typically carry out this assessment promptly, such that one might expect to receive either the statement of grant of protection notice, or a notification of refusal, invariably no later than two months following the publication date of the underlying Hague design registration.

To the extent the UK design registry wishes to object to a UK designation from a Hague design registration, as part of a notification of refusal, this will usually be because it considers:

1. there to be an inconsistency between the various views of a given design from the Hague design registration (for example, one view showing a feature in solid lines, yet a different view showing this same feature in dashed lines);
2. that a given design from the Hague design registration depicts more than one design, as opposed to just a single design;
3. that a design from the Hague design registration solely subsists in: (a) features of appearance of a product which are solely dictated by the product's technical function; or (b) features which are necessary in order for the product, or a product which is placed next to it, to perform its function;
4. that any design from the Hague design registration contravenes any of the “Schedule A1” exclusions. These exclusions are quite niche, but typically apply in instances where a design contains a national flag of some form; contains a representation relating to the Crown or Royal family, or anything else that conveys Royal patronage or authorisation; or depicts a symbol protected under the Article 6ter database;
5. that a design from the Hague design registration contravenes public policy or accepted principles of morality.

To be clear, the UK design registry will not carry out an assessment as to whether each design from the Hague design registration is novel, or else is anticipated by some sort of prior art.

The most common objections contained in a notification of refusal from the UK design registry are typically those relating to above points 1) and 2).

Objections under point 1) are self-evident, and usually stem from an error in the preparation of the views for the design registration, which is an error not previously identified by WIPO during the initial examination of the Hague registered design application, prior to its registration.

An objection under point 2) is most often observed in instances where a given design is intending to protect a “set” of multiple products, which the UK design registry does not consider to be products which are acceptable for forming part of a single set. An objection under this point 2) is also typically observed in instances where the design relates to an animated graphical user interface, in instances where the UK design registry considers there to be too much visual change between the various views which collectively make up the animated graphical user interface.

Objections under points 3) to 5) are less common, but do occasionally arise (especially where a design contains a national flag of some form).

To the extent an objection is issued by the UK design registry as part of a notification of refusal, options for overcoming the objection are much more restricted than with a “national” UK design registration (one which is applied for at the UK design registry directly). Specifically, it is not possible to submit amended views in response to an objection, nor is it possible to divide out the design into one or more “divisional” UK design registrations.

Thus the only possible response options for dealing with an objection, contained in a notification of refusal from the UK design registry, are to either challenge the objection using argumentation, or else delete one or more views from the design in question such to ensure the remaining views of the design overcome the objection. Any such deletion of views will only apply to the UK designation from the Hague design registration, and so will not apply to any other designation(s) within the Hague design registration.

Alternatively, one can simply not respond to any issued notification of refusal from the UK design registry. In which case, the UK designation relating to any design(s) to which the notification of refusal applies will be refused, which will then be reflected accordingly on the Global Design Database entry for the relevant Hague design registration.

For those thus contemplating a design which relates to subject matter veering into the realms of points 1) to 5) above, it is worth speaking to a practitioner familiar with UK design registration matters before proceeding with the design via a UK designation in a Hague design registration, in case protecting its scope in the UK warrants a different approach. Such an approach potentially including an amendment to the scope of the design in some form; or else pursuing the design outside of the Hague design registration system, as part of a national UK design registration, where more options will be available for responding to any objection raised by the UK design registry.

In other words, don’t leave it until the notification of refusal is issued; it is so much more difficult to remedy the situation at this late stage!

Useful links

• Registered Designs Act 1949, Schedule A1: dycip.com/registered-designs-act-sa1
• Article 6ter Express Database: dycip.com/article-6ter-database
• Global Design Database: dycip.com/wipo-global-design-database