The 1999 Act provides for the recognition of, successively, two sets of effects to an international registration, namely, the effect as an application under domestic law and the effect as a grant of protection.
Firstly, as from the date of the international registration, the international registration has at least the same effect in each designated Contracting Party as a regularly-filed application under the law of that Contracting Party. "At least the same" is a minimum standard; in other words, the effect may start on an earlier date, or its scope may be broader in respect of international registrations. One of the consequences is that any Contracting Party that affords provisional protection to published national or regional applications must also afford that type of protection to published international registrations in which it is designated. Furthermore, where under the applicable law only the granted registrations are published, that Contracting Party may afford provisional protection to international registrations as from the publication date of the international registration in which it is designated.
Secondly, in each designated Contracting Party the Office of which has not notified a refusal of protection, the international registration has the same effect as a grant of protection under the law of that Contracting Party. The effects of a grant of protection start to run, at the latest, from the date of expiry of the applicable refusal period (six or 12 months, as the case may be).
Furthermore, the only exception to the above principle is that a Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition to the grant of protection, may, by making the corresponding declaration to the Director General of WIPO, specify that the international registration will have the effect as a grant of protection at the latest:
99 Article 14(2); Rule 18(1)(c)
The effect as a grant of protection, as described above, applies to the design or designs that are the subject of that registration as received from the International Bureau by the designated Office or, where applicable, as amended in the procedure before that Office.
The words “at the latest” mean that each Contracting Party has the possibility of recognizing that the international registration has the effect as a grant of protection under its laws at an earlier date, for example as from the date of the international registration. Moreover, it is to be understood that, where a multiple international registration has been refused with respect to some only of the designs contained in the registration, protection of the international registration under the applicable law is limited to those designs that are not subject to the notification of refusal.
Furthermore, where a refusal of protection has been notified and subsequently withdrawn (totally or partially), the effect as a grant of protection under the law of the Contracting Party concerned must be afforded to the international registration, to the extent that the refusal is withdrawn, at the latest on the date of its withdrawal. Again in this case, the words “at the latest” mean that each Contracting Party has the possibility of recognizing that the effect of protection under its applicable law begins at an earlier date, for example retroactively as from the date of the international registration. The words “to the extent that the notification of refusal is withdrawn” indicate that, where a refusal is withdrawn with respect to some only of the designs that were the subject of the notification, the protection under the applicable law does not extend to the designs with regard to which the refusal has not been withdrawn. Since a withdrawal of refusal may take the form of a statement of grant of protection, the foregoing applies where such a statement is issued in the context of a withdrawal of refusal (refer to “Notification of withdrawal of refusal”).
99 Article 14(2)(b), Rule 18(4), Rule 18bis(2)
The Office of a designated Contracting Party may, within the applicable refusal period, send to the International Bureau a statement of grant of protection where it has not communicated a notification of refusal and has decided to accept the effects of an international registration (refer to “Statement of grant of protection in the absence of a prior notification of refusal”). In such a case, the international registration may have, in accordance with the law of the designated Contracting Party, the effect as a grant of protection, for example, as from the date on which the statement of grant of protection was issued, since each Contracting Party has the possibility of recognizing that the effect of protection begins at an earlier date. As regards the latest time at which protection must be granted, the principles explained above remain applicable.
Finally, the date of the international registration is, in principle, the filing date of the international application. However, pursuant to Article 10(2)(b) of the 1999 Act, the date of the international registration may be later than the filing date owing to certain irregularities in the international application relating to Article 5(2) (refer to “Date of the international registration” and “Irregularities concerning special requirement notified by a Contracting Party or regarding the identity of the creator, description and claim”).
The postponement of the date of the international registration may expose the design(s) in the international registration to potential risks under the applicable law (also in the designated Contracting Parties which have not made a declaration under Article 5(2) of the 1999 Act, which would cause a postponement of the date of the international registration), for example:
– where the effect as a regularly-filed application under the law of a designated Contracting Party commences on the date of the international registration
(i) the novelty of the design(s) may be destroyed by a design made available to the public before the (postponed) date of international registration (i.e., including the period between the filing date of the international application and the (postponed) international registration date);
(ii) a priority claim in the international registration may be dismissed by the Office of a designated Contracting Party if the filing date of the earlier application is more than six months prior to the (postponed) date of the international registration, even if the filing date of the international application is within the six-month priority period (refer to “Item 13: Priority claim”).
– Where the effect as a grant of protection under the law of a designated Contracting Party begins from the date of international registration, protection may not be provided to the design(s) against the use of same/similar design(s) by a third party before the (postponed) date of international registration.
Applicants are thus advised to make sure to provide the additional mandatory contents, where applicable, at the time of filing the international application, in order to avoid any potential risks.
However, it is recalled that a designated Contracting Party has the possibility of recognizing that the international registration has the same effect as a regularly-filed application, as well as, as a grant of protection under its law, as from the filing date of the international application, rather than the date of the international registration.
Where a designated Contracting Party has made a declaration under Article 7(2) of the 1999 Act, concerning the individual designation fee to be paid in two parts, the effect as grant of protection is subject to the payment of the second part of the individual designation fee.
Rule 12(3), Rule 18bis(1)(a) and (2)
If no refusal is notified within the prescribed time limit of six months by a Contracting Party designated under the 1960 Act, the international registration becomes effective in that Contracting Party as from the date of the international registration. However, in a Contracting Party having a novelty examination, the international registration becomes effective from the expiration of the refusal period unless the domestic law provides for an earlier date for registrations made with its national Office. Furthermore, if, under the provisions of the domestic law of a Contracting State having a novelty examination, protection commences at a date later than that of the international registration, the term of protection must be computed from the date at which protection commences in that State. The fact that the international registration is not renewed or is renewed only once shall in no way affect the terms of protection thus defined.
Where a refusal of protection has been notified and subsequently withdrawn (totally or partially), the effects under the law of the Contracting Party must be afforded to the international registration, in accordance with the principles mentioned above.
Where a statement of grant of protection has been notified in the absence of a prior notification of refusal, the same considerations as outlined in “Effects of the international registration in respect of Contracting Parties designated under the 1999 Act” apply (refer to “Statement of grant of protection in the absence of a prior notification of refusal”). As regards the latest time at which protection must be granted, the principles explained above remain applicable.
With respect to Contracting Parties designated under the 1999 Act, the international registration is effected for an initial period of five years and may be renewed for two additional five-year periods before each of those periods expires. Subject to renewal, the minimum duration of protection in each Contracting Party designated under the 1999 Act is therefore 15 years following the date of international registration.
Moreover, if the national legislation of a Contracting Party provides for a duration of protection in excess of 15 years for designs filed for registration by the national route, the international registration may be renewed with respect to that Contracting Party for additional periods of five years up to the expiry of the total duration of protection provided for in its national legislation.
With respect to Contracting Parties designated under the 1960 Act, the international registration is made for an initial period of five years and may be renewed for one additional period of five years. Subject to renewal, the minimum duration of protection in each Contracting Party designated under the 1960 Act is therefore 10 years following the date of international registration.
Moreover, if the national legislation of a Contracting Party provides for a duration of protection in excess of 10 years for designs filed for registration by the national route, the international registration may be renewed with respect to that Contracting Party for additional periods of five years up to the expiry of the total duration of protection provided for in its national legislation.