Brexit and your designs

The EU and the UK negotiating teams have agreed the terms of a detailed post-Brexit Trade and Cooperation Agreement which has been given effect from 1st January 2021.

This article is part of our Brexit series. It advises readers on the immediate considerations for how Brexit will impact business who rely on registered and unregistered design protection now that the transition period has ended.

The effect of Brexit on the EU Community design regime

Following the end of the Brexit transition period on 31 December 2020, the Community design regime governed by Commission Regulation 6/2002 (the Community Design Regulation) ceased to apply in the UK. Accordingly, both Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) ceased to have effect in, provide protection in or be enforceable in the UK from that point (although their force and effect will of course continue in the EU). Instead, design protection in the UK is now solely governed by the UK’s domestic design legislation, to which changes have been made to compensate for the loss of Community design protection in the UK.

The impact on registered designs

UK law has long provided for a national UK registered design (UKRD) right regime (set out in the UK's Registered Designs Act 1949), which mirrors the RCD regime in all substantive areas including duration, the requirements for validity and the rules for infringement. The UKRD regime will continue in force unaffected by Brexit.

To compensate for the loss of RCD protection in the UK, at the end of the Brexit transition period, all RCDs which at that point were registered and fully published were automatically cloned (at no cost to the holders) onto the UK designs register as equivalent national UKRDs. Such cloned UKRDs will retain the application, registration and priority dates of the parent RCDs.

For RCDs that were either still pending applications on 31 December 2020 or which were still under deferred publication at that point, there will be a 9 month period during which UKRD applications can be filed claiming the RCD filing date (and, if applicable, the priority date). In these cases, national application fees must be paid. If using this 9 month period for RCDs that remain under deferred publication it is important to note that:

• it will not be possible to defer publication in the UK to a date that is later than the end of the deferment period for the RCD; and
  
  
• it will not be possible to defer for more than 12 months from the date on which the UK application is filed. The UKRD system only allows for designs to be deferred for up to 12 months, rather than the 30 months provided for under the RCD system.

So, whilst there should be no overall loss in registered design protection, there are some practical points to note to businesses with registered design portfolios:

• These changes will mean an increase in the size of registered design portfolios. Steps will need to be taken to add the newly created UKRDs to portfolio management databases, and ensure that renewal dates for these new rights are monitored.
  
  
• From 1 January 2021 onwards anyone wanting to protect newly created designs in both the EU and the UK will need to file separate RCD and UKRD applications. The additional cost of doing so will need to be budgeted for.
  
  
• Where the deferred publication mechanism is routinely used, the shorter 12 month period available in the UK will need to be factored into filing strategies.
  
  
• For those with pending or deferred RCDs as at 31 December 2020, the 9 month deadline discussed above should be monitored if there is an interest in obtaining UKRD protection.

The impact on unregistered designs

Protection afforded by unregistered design rights has historically been a critical weapon for those businesses for whom registering designs is impractical, either due to the cost of filing or the short expected lifetime of the designs in question. The impact of Brexit on the unregistered design protection regime is more complex than that for the registered design protection regime, and opens up the possibility of a gap in protection for holders.

National UK design legislation has long provided a UK unregistered design right (UKUDR) under the Copyright, Designs and Patents Act 1988 and that right will continue to be available to qualifying designers notwithstanding Brexit.

However, the scope of the UKUDR does not mirror that of the UCD right. For instance, UCD protects the appearance of the whole or a part of a product (so 2D or 3D designs) for a term of 3 years, whereas UKUDR only protects shape/configuration but not surface decoration (so effectively only 3D designs) normally for 10 years. The validity requirements for UCD are that the design be novel and have individual character over prior designs, whereas for UKUDR the design must be original (i.e. not copied) and not commonplace. A consequence of this mismatch is that some designs that would attract UCD protection (e.g. surface decoration) would not meet the requirements to benefit from UKUDR protection. Therefore, from the end of the transition period when UCD ceased to have effect and be enforceable in the UK, many designs which would previously have benefitted from UCD protection could be left unprotected. To compensate for this problem, the UK has created two new types of UK unregistered design rights (i.e. in addition UKUDR):

• Continuing Unregistered Design (CUD)
  
  
• Supplementary Unregistered Design (SUD)

Both of these new rights will mirror the UCD in terms of validity, infringement and term (save that they of course apply to the UK only).

The CUD right is intended to prevent any loss in protection in the UK for any UCD which existed at the end of the transition period and still had time left to run. The CUD right will continue to protect the design automatically in the UK for the remainder of its 3 year term.

The SUD is a forward-looking right, intended to fill the gap left by the absence of UCD. Designs that are first disclosed in the UK (or another qualifying country) after the end of the transition period will be protected automatically under the new SUD right in the UK for a 3 year term from the date of that disclosure.
Note that the existing UKURD right will continue to operate as normal alongside these new rights (but with some changes to the qualification criteria).

The impact on unregistered design protection of location of first disclosure

Under the current EU design legislation, it is very likely that new designs first made available to the public (e.g. displayed at a trade show) outside the EU (for example, in the UK, the USA, China, etc) will not be entitled to be protected by UCD protection. Putting this another way, in order to attract UCD protection for a new design, that design must first be disclosed within the EU. Conversely, in order to attract UK unregistered design protection, it will be necessary to first disclose the design within the UK. It follows therefore that the designer may have to decide whether to disclose first in the EU (to get UCD protection) or in the UK (to get UK protection), but knowing that they cannot have both. (It should be noted here that, surprisingly, it is not yet known whether a first disclosure which takes place online, for instance on the designer’s website or social media channels, and hence in principle first disclosed simultaneously everywhere around the world, would satisfy the requirement of being “first disclosed” in the EU or the UK. There is at least a risk that an online disclosure will not satisfy the EU or UK requirements and hence fail to attract unregistered protection in either territory.)

To ensure at least some level of design protection in both the UK and EU therefore, it will be necessary either to (i) first disclose your new design in one territory (to get unregistered design protection there) and also register as a registered design in the other; or more preferably (ii) register the design in both territories to avoid reliance on unregistered design rights altogether.

Comment

Whilst the various measures which the UK government has taken to compensate for the loss of Community design protection in the UK after the end of the transition period are to be welcomed, they do serve to make an already complex landscape for design protection in the UK even more so. Protecting 'designs' in the UK has always been an overlapping and interlocking patchwork of different rights, but in the post-Brexit UK, there will be even more complexity with one registered right, three types of unregistered design right, plus potentially copyright being relevant as well. Businesses will need to be well prepared for these changes.

Key points

• All RCDs existing at the end of the Brexit transition period have been automatically cloned into equivalent UK registered designs. There will be a 9 month period during which pending/deferred RCDs can be registered in the UK and maintain the RCD filing/priority dates.
  
  
• If registered design protection is now sought for a new design in both the UK and EU, separate applications to the UKIPO and EUIPO will now be needed.
  
  
• New types of unregistered design rights have been introduced in the UK to compensate for the loss of the unregistered Community design.
  
  
• For unregistered rights, the location of first disclosure will dictate where such unregistered design right protection arises. Registering designs is therefore more important than ever.