How the Landscape for UK Design Rights is Changing as we Approach Brexit

Key Points:

  • UK registered design filings almost double from 2016 to 2017 as applicants prepare for Brexit.
  • Existing European registered design rights will likely be automatically converted to UK registered design rights after Brexit, but the UK government expects administrative steps to be required from the rights holder to secure these registrations.
  • European registered design applications pending when the UK leaves the EU will likely be eligible for conversion into an equivalent UK application, but the UK government will not provide any formal notification to those eligible for this conversion.
  • The UK government intends that existing unregistered European Community design rights will be enforceable in the UK after Brexit and for a new supplementary unregistered design right to be introduced in the UK to replicate this protection after Brexit.
  • Filing registered designs in parallel in the UK and EU remains our recommended course of action to combat the uncertainty surrounding design rights as Brexit approaches.
  • Our designs team is able to advise those considering registered design protection on the right filing strategy for meeting their individual needs.

As the UK approaches 29 March 2019, the so-called “Brexit Day”, one thing is certain: there will be big implications for companies who have previously relied on registered and unregistered European Community designs to protect their products in the UK.  Much uncertainty still surrounds how the UK will unpick itself from the EU when it comes to European Community designs rights that are pending and in force in the UK by virtue of the UK’s membership of the European Union.

Our advice has been to “hope for the best but prepare for the worst” when it comes to EU intellectual property rights in the UK, and this has been borne out across the UK registered design system, which has seen the number of UK registered design applications almost double from 2016 to 2017. In line with this trend, our own experience is that many applicants are taking advantage of the reduced official fees in order to shore-up their design protection as the UK prepares to leave the EU. This is achievable by a “dual-filing” approach in which EU and UK registered designs are filed in parallel. So why are filing strategies changing so drastically, and should you be doing anything differently to safeguard your design rights as Brexit approaches?

Historically, because the UK and EU registered design laws are closely aligned, applicants have often relied upon registered European Community designs to provide strong registered design protection throughout the EU, including the UK. In contrast, the EU and UK unregistered design laws, which confer EU and UK unregistered design rights automatically and often simultaneously, are rather different. As “free” rights, these differences have often proved advantageous to those wishing to enforce them.

Consequently, the choice between a UK and European Community registered design has effectively been no more than a choice of the territorial extension of the right. However, as Brexit approaches, filing strategies have had to change in order to take account of the uncertainty that surrounds the conversion of both registered and unregistered European Community design rights into equivalent UK rights.

In recent months, the UK has set out its plans for handling the conversion of design rights in the event of a “no deal” scenario and this provides a good point of reference against which any filing strategy may be measured.

For registered designs, the UK government plans for owners of registered European Community designs to be automatically granted a new UK equivalent right, which will enjoy the same protection and enforceability in the UK as a normal UK registered design. Meanwhile, owners of European Community design applications which are still pending as of 29 March 2019 will have a nine month period from the date of Brexit to apply for equivalent protection in the UK while retaining their earlier filing or priority date; however, the UK Intellectual Property Office will provide no help in the form of formal notifications or reminders to those who could make use of this conversion system. The UK government has indicated that it intends to ensure minimal administrative burden for these conversion processes; however, it is clear that a risk exists that the administrative process, however minimal, has the potential to inadvertently trip up rights holders, especially those with sizable IP portfolios.

For unregistered designs, on the other hand, the government intends that all existing unregistered European Community designs, which by their very nature (due to the differences mentioned above) cannot be directly converted into UK unregistered design rights, will continue to be protected and enforceable in the UK for the remaining period of protection of the right. Furthermore, for IP holders post-Brexit, the UK will create a new unregistered design right in UK law, which will be known as a supplementary unregistered design right and which will mirror the characteristics of the unregistered European Community design.

While it is a relief to see that the UK government intends to leave rights-holders no worse off as a result of Brexit when it comes to unregistered design rights, the uncertainty surrounding the conversion of registered European Community design rights and the inevitability of administrative steps that must be taken suggest that the dual-filing approach we recommend remains the safest and most assuring filing strategy for registered design applications in the final months of the UK’s membership of the European Union.

For more information on how we can help you protect your designs, visit our Designs page here. If you wish to discuss any of the the issues raised in this article, please get in touch with your usual GJE attorney or contact us via gje@gje.com.