Journal

Adoption of the Design Law Treaty – Headline Summary

November 2024 saw the finalising of the wording of the Design Law Treaty (‘DLT’), following a WIPO diplomatic conference in Riyadh, Saudi Arabia. William Burrell (Fellow) explains why the adopting of this Treaty represents excellent news for design registration users all over the world.

Dropped provisions

Going into the conference, the DLT was subject to a number of potentially very useful, though inherently more contentious, draft provisions. Somewhat expectedly, a number of these provisions fell away, or were watered down, by the end of the conference – inferably because a consensus could not be reached. These provisions included:

Original draft article 9bis: This mandated a minimum term of 15 years of protection for a design registration (subject to intermediary renewal fees being paid, where appropriate). Setting such a 15-year term of protection is important, since it is a pre-requisite for any territory signing up to the international ‘Hague’ design registration system, where this minimum term of protection is mandated. Though unfortunately, this article was completely removed from the finalised version of the DLT, as adopted.

Original draft article 14bis: This effectively mandated electronic exchange of priority documents, which would have been a precursor for facilitating a much wider usage of the priority DAS system across more territories around the world. Though in its adopted form, as part of article 11, any electronic exchange of priority documents is not mandatory, but is merely encouraged.

Original draft article 9ter: This effectively mandated the provisioning of an electronic file register, and a system for electronic applications, for each design territory. The finalised version of this provision, however, as part of adopted article 11, makes no requirement at all for an electronic file register, and merely makes the providing of a system for electronic applications something which is endeavoured towards.

Retained provisions

The above provisions aside, what has been retained, though, includes mandatory restoration provisions for missed deadlines, including the setting of a period of at least one month, after the six-month priority period has expired, in which restoration of this missed priority period can be requested (under the relevant ‘unintentional’ or ‘all due care’ standard of care adopted by the territory in question). This will be of particular interest in the UK, noting the UK design registration regime does not currently provide a restoration provision in respect of missing the six-month priority period. These restoration provisions are as per adopted article 14(1)(ii) and article 16(2).

Also retained is a generously worded 12-month novelty grace period provision, to cover disclosures made prior to the effective priority date of the design registration in question. The wording of this provision is reproduced below, noting its importance, and is per adopted article 7:

Article 7

Grace Period for Filing in Case of Disclosure

A disclosure of the industrial design during a period of 12 months preceding the date of filing of the application or, if priority is claimed, the date of priority, shall be without prejudice to the novelty and/or originality, and as the case may be, individual character or non-obviousness, of the industrial design, where the disclosure was made:

1. 1. 1. by the creator or his/her successor in title; or
      2. by a person who obtained the disclosed information directly or indirectly, including as a result of an abuse, from the creator or his/her successor in title.’

The broad wording of this adopted novelty grace period provision, which is along the lines of that already provided under the current UK/EU design registration regimes, represents a good outcome, noting going into the diplomatic conference there were various other, less generous, versions of this novelty grace period provision which were proposed for adoption.

Also retained in the wording of the DLT as adopted are ‘divisional’ provisions, per finalised article 9(1)(ii), which may allow an application containing more than one design to be split out to allow each design to be pursued as its own application. This is something which the UK design registry currently allows in the context of national UK design registrations, but not in the context of a UK designation from a Hague design registration.

From the UK perspective as well, there were some initial questions on whether the wording of the adopted articles and rules of the DLT might place restrictions on the UK design registry being able to require a stamp duty (tax-related) declaration as part of the assignment recordal process (per current Designs Form DF12A). This stems from the wording of adopted article 21(1) and article 21(6), along with adopted rule 14, which place restrictions on what can be requested as part of this assignment recordal process. However, section 3 of a resolution accompanying the wording of the adopted articles and rules appears to clarify that additionally requiring a stamp duty declaration in such assignment contexts will remain permissible.

If WIPO was, itself, to ratify the DLT, this might place restrictions on them being able to mandate the provisioning of an email address for the applicant when initially submitting a Hague design registration (which is currently the case for any Hague design registration submitted online), by virtue of adopted article 6(3). However, any requiring of an email address for an applicant, though not necessarily for according a filing date, might nonetheless be permissible under adopted rule 7(1)(b)(iii).

Next steps

The DLT requires 15 states or intergovernmental organisations to have deposited their instruments of ratification or accession, following which the DLT will take effect three months after that date. States or intergovernmental organisations ratifying/acceding after the DLT has taken effect will be bound by it three months after the date on which they deposit their instrument of ratification or accession.

Links to relevant legislative texts:

• Articles and regulations of the DLT as agreed: www.wipo.int/edocs/mdocs/sct/en/dlt_dc/dlt_dc_26.pdf
  • Articles: pages 3-25
  • Regulations: pages 26-40
  • Related resolution: pages 41-42
• Original draft Articles of the DLT: www.wipo.int/edocs/mdocs/sct/en/dlt_dc/dlt_dc_3.pdf

William Burrell is a partner at D Young & Co LLP in London and a member of CIPA’s Designs & Copyright Committee.