How to Protect your Designs after Brexit

After much uncertainty, the UK is finally set to leave the EU on 31st January 2020. As we have said before, this will have big implications for companies who have previously relied on registered and unregistered European Community designs to protect their products in the UK.

The headline point is that both registered and unregistered community rights will remain in force and may still be obtained in respect of the UK until the end of the transition period, which is currently expected to expire at the end of 31 December 2020. After this date, all EU design rights will be eligible for conversion into equivalent UK design rights. However, once out of the transition period, there will be a number of issues for existing and prospective rights holders to consider.

After the transition period, registered Community designs (RCDs), unregistered Community designs (UCDs), and international design registrations designating the EU will no longer be valid in the UK. The good news is that these existing rights will be immediately and automatically replaced by UK rights. This means that current holders of RCDs and UCDs need to take no special action or incur any upfront costs to retain their rights in the UK. However, there will inevitably be some administrative burden for rights holders in identifying these new rights and updating their records accordingly.

All registered and published RCDs will be recorded on the UK register and will be treated as if they had been applied for and registered under UK design law. They will retain the registration and application dates of the corresponding RCDs and will inherit any priority dates. Such “re-registered” designs will each be allotted a UK number consisting of the full RCD number prefixed with the digit ‘9’. This will aid in identifying re-registered rights created from RCDs and distinguishing them from existing UK registered designs.

The process for pending rights, on the other hand, is not quite so straightforward. If an applicant holds a pending RCD application at the end of the transition period, they will need to apply to register a UK design in the subsequent 9 months and will then retain the earlier filing date of the pending RCD. These applications will be treated as a UK registered design application and be examined under UK design law. The standard UK fee structure will apply in such cases.

After Brexit, unregistered Community designs (UCDs), will no longer be valid in the UK. On exit day, these rights will be immediately and automatically replaced by equivalent UK rights. They will continue to be protected in the UK for the remainder of the 3 year term attached to them. Under the new law, a UK unregistered design right called a Supplementary unregistered design (SUD) will also be created that will exist alongside existing UK unregistered design rights. This supplementary right will ensure that the full range of design protection provided in the UK before exit day will remain available after the UK leaves the EU. The terms of SUD protection will be similar to that already conferred by an UCD. SUDs will mirror UCDs by providing post-exit UK protection for both 3-and 2-dimensional designs. However, the protection provided by a SUD will not extend to the EU. The SUD right will be established by a first disclosure made in the UK or another qualifying country (such as Hong Kong, New Zealand, and some other smaller Commonwealth countries but not including the EU states) and will be subject to interpretation by the UK Courts. While first disclosure in the EU will not establish an SUD right, it may destroy the novelty in that design.

It is worth noting that UK businesses and other entities will still be able to obtain registered design protection in the remaining 27 member states of the EU through an application to the EUIPO. Any equivalent design protection in the UK will need to be obtained by filing an application for a UK registered design at the UKIPO. Typically, this will need to be done in parallel with filing an application for RCD at the EUIPO. This will add somewhat to the administrative burden and costs overall, although fortunately the UKIPO official fees are significantly lower than those for the EUIPO and are some of the lowest in the world.

As a European firm we, at GJE, will continue to file both RCDs and UK registered designs for our clients around the world, post-Brexit. Businesses from the UK, EU and worldwide will still be able to apply for UK registered designs through the UKIPO, for EU registered designs through the EUIPO, or both of these. Businesses may also use the international route for design protection under the Hague Agreement for the international registration of industrial designs but designate the EU and the UK separately.

In view of the recent developments and preparations made by the UKIPO, while some changes are inevitable after the end of the transition period (presently after 31 December 2020), design owners can rest assured that their existing rights will stay protected in the UK after Brexit with minimal effort required at their end. However, businesses will need to devise new strategies for protecting their designs going forward. With multiple options available for obtaining protection in both the EU and the UK, each with their own pros and cons, it is important for businesses to fully understand these options to be able to make an informed decision. At GJE, we are there to help you making that decision and in obtaining protection for your designs irrespective of the option you decide to choose.

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 issues raised in this article, please get in touch with us via gje@gje.com.

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