The protection of a design filed with the Office applies only in the Principality of Monaco. It is possible, however, to extend this protection to other countries. It is important to choose these countries carefully, as this will determine the scope of your design’s protection, and will also indicate the most suitable international protection procedure for your circumstances.
Choosing a market and procedure
To choose the most straightforward protection procedure that is best suited to your requirements, it is essential to identify the countries in which you are operating or plan to operate in the future.
If your commercial development policy is targeting a large number of countries, it is advisable to opt for an international design which, via the international design registration system commonly known as “The Hague System”, has the advantage of simplicity:
- A single form
- A single point of contact: the International Bureau of the World Intellectual Property Organization
- A single working language: French
- A single set of fees, instead of different fees in each country selected
- A wide selection of countries (over 66)
- A single process for updating your design which takes effect in all of the countries designated
- A single renewal date for all of the countries designated
NOTE: Unlike an international trademark registration application, the application to register an international design does not require a prior national filing. Moreover, The Hague System is merely a single procedure used to produce a series of national designs, which will not necessarily have the same effects in different countries. Consequently, it is possible that your design may be refused protection in certain countries and accepted in others.
However, if you are interested in countries which are not part of The Hague System, or in a limited number of countries, it would be advisable to register your design separately with the industrial property office in each country concerned. This option may prove less costly, given the limited number of countries involved. Nonetheless, you should bear in mind that in this case, depending on the countries concerned, you may need to enlist the services of an industrial property consultant.
Availability of the industrial design
Whatever procedure you choose, it is strongly recommended to check that there are no existing prior rights to your industrial design. The holder of a prior right may seek to have it cancelled.
It is vital to search the national registers of the countries you are targeting, to avoid any risk of litigation in the future. To do this, you can use the services of an industrial property consultant. They will be able to interpret the search results and determine the most appropriate strategy for your needs and budget.