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Hague design registrations: statement of grant notices now being trialled by UK design registry

31 May 2024

William Burrell
William Burrell
Partner, Patent Attorney

In what is exciting news on the UK design registration front, the UK design registry (the UK Intellectual Property Office, UKIPO) has started, on a trial basis, to issue positive statement of grant notices in the event the registry considers a UK designation from a Hague design registration to be allowable.

This article was first published in the CIPA Journal.

This approach differs from that previously adopted by the UK design registry, under the “no-news-is-good-news” approach, whereby the registry would previously only issue a communication on a Hague design registration if it considered there to be an issue with the maintenance of the registration in the UK. More on this can be found in our previous article: “Hague design registrations: where’s my stamp of approval?” published 07 February 2023 (see related articles).

Some of the first statement of grant notices issued by the UK design registry were published by World Intellectual Property Organisation (WIPO), the entity responsible for handling Hague design registrations, on 15 March 2024, as part of its International Designs Bulletin 11/2024. Moving forward, and aside from being viewable in the pertinent weekly publication from the International Designs Bulletin where the notice is first issued, any issued statement of grant notice will also be viewable under the history tab of the WIPO global design database register entry for the Hague design registration in question.

The UK design registry tends to complete its assessment of a Hague design registration designating the UK no later than 4-6 weeks following the initial publication of the Hague design registration in question, by WIPO. In which case, one would typically expect any statement of grant notice issued by the UK design registry to be published no later than three months from the date when the Hague design registration is initially published by WIPO. This timeframe, however, is still very much slower than obtaining UK design registration via the national route of submitting a UK registered design application directly before the UK design registry, where registration can be achieved in as little as week from initial submission of the registered design application.

Aside from providing the owner of the Hague design registration faster certainty that any UK designation as a result of it is allowable, the issuance of such statement of grant notices by the UK design registry will now much better clarify how a UK designation from a Hague design registration can be practically enforced. This stems from the fact that UK design registration statute specifies that no proceedings shall be taken in respect of an infringement of a UK designation from a Hague design registration which is committed before the date of issue of the statement of grant notice. Therefore, without the issuance of such a notice, as was the case under the former no-news-is-good-news approach, the statute leaves it open as to when the UK designation can be practically enforced. This is something that representatives of D Young & Co and others reported to the UK design registry, which is what may have prompted the shift in approach by the registry in now issuing the statement of grant notices: to help provide clarity on this point for future Hague design registrations designating the UK.

Especially for those seeking pan-European design registration protection via the Hague design registration system, the UK design registry now issuing positive statement of grant notices does better align its approach with many other European design registries which can be also designated under the Hague design registration system, such as the EU Intellectual Property Office (EUIPO) in the context of EU designations, and/or the Norwegian design registry, both of which already issue such notices for their respective territories.

In all therefore, while this trial of issuing of statement of grant clearly represents a beneficial change in the context of pursing design registration protection in the UK via the Hague route, which may well increase its attractiveness to some, it is be noted that pursuing such UK protection via the Hague route still provides many other notable disadvantages compared with obtaining this protection via the national route of submitting a UK registered design application directly before the UK design registry: the UKIPO.

Careful thought should be given at the pre-submission stage, to establish whether the Hague route is indeed the best route for obtaining design registration protection in the UK, or whether the national route might nonetheless be the most preferable option. Here at D Young & Co we are extremely experienced in using both routes, so are well placed to advise on which strategy may be preferable under any particular set of circumstances.

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