Post-Brexit changes will affect both Registered Community Designs and Unregistered Community Designs in the UK.
The UK left the European Union on 31 January 2020 and we are now coming to the end of the withdrawal transition period. On 1 January 2021 a new intellectual property law regime will take effect. The below guide highlights the key changes you should expect and what steps you might need to consider taking to ensure that your company’s rights are protected.
Designs
Registered Community Designs (RCDs) afford protection in all member states of the European Union through a single registration governed by the EU Intellectual Property Office. After the end of the withdrawal transition period, RCDs will no longer offer protection in the UK. They will continue to have effect in the remaining EU member states and UK businesses can still hold and apply for RCDs.
On 1 January 2021, the UK Intellectual Property Office (UKIPO) will create a ‘re-registered UK design’ for every RCD with registered status. The grant of the re-registered UK design will be automatic, immediate and at no cost to the RCD holder. This also applies to international design registrations designating the EU under the Hague Agreement.
Each re-registered UK design will:
- Be recorded on the UK designs register;
- Have the same legal status as if you had applied for and registered it under UK law;
- Keep the original RCD filing date;
- Be a fully independent UK registered design that can be challenged, assigned, licensed or renewed separately from the original RCD.
What if I don’t want a re-registered UK design?
You may decline the grant, or ‘opt out’, of the re-registered UK design if certain circumstances exist. This may be beneficial for rights holders that, for example, do not wish to unnecessarily expand their portfolio, or in the case of territorial carve-out arrangements. Requests to opt out will only be accepted after 1 January 2021.
What about pending RCDs?
Re-registered UK designs will only be created for RCDs that have a registered status by 31 December 2020. However, if you have an RCD Application that is still pending by that date and you wish to also protect the design in the UK, then the UKIPO will allow you a period of nine months (until 30 September 2021) to apply to register the same design as a UK right. Such applications will incur the usual fees for national UK registered designs and will be subject to UK examination requirements.
RCDs are usually published once they are registered. However, RCD publication can be deferred for up to thirty months so that neither the file nor the design are made public. Under the new regime, an RCD subject to deferred publication will be treated the same way as a pending RCD Application, in that holders can file a re-registered UK design by 30 September 2021, though they will not undergo a substantive examination as they will have already been examined by the EUIPO. Importantly, the maximum deferment period for the re-registered UK design will be 12 months.
What will happen for RCDs that expired before 1 January 2021?
Re-registered UK designs will be created for those RCDs that expired in the six months prior to 1 January 2021, or those that are still within the six-month late renewal period. These re-registered UK designs will have an ‘expired’ status and will only be given effect in the UK if the late renewal of the RCD is made. If the RCD is not late-renewed, then the re-registered UK design will be removed from the UK register on expiry of the corresponding late renewal period and will be treated as if it had never been applied for in the UK.
For RCDs which were struck from the EU register but reinstated after 1 January 2021, a re-registered UK design will be created only if the proprietor notifies the UKIPO within six months of such reinstatement.
What will happen for RCDs that are due for renewal after 1 January 2021?
Where an RCD is due for renewal on or after 1 January 2021, the re-registered UK design will be subject to independent renewal at the UKIPO. This is irrespective of whether the RCD was renewed in advance of the expiry deadline. If the re-registered UK design is not independently renewed then it will be removed the UK register, subject to standard late-renewal or restoration provisions under UK law.
What is the position relating to unregistered design rights?
An Unregistered Community Design right (UCD) arises automatically when the design is first made available to the public in the European Union and it lasts for three years. A UCD may protect the appearance of the whole or part of a product and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product.
Any UCDs that were valid and subsisting before the end of the withdrawal transition period will continue to be afforded protection in the UK, on the same grounds, for the remainder of their three-year term. However, from 1 January 2021 any new UCDs created will not afford protection in the UK, though they will still continue to have effect in the remaining EU member states and UK businesses can still hold UCDs.
Under the new regime, from 1 January 2021 a Supplementary Unregistered Design (SUD) will become available under UK law, which will provide the same type of protection as a UCD (including e.g. surface decoration, which is not protected by UK unregistered design rights) but will only have effect in the UK. An SUD will arise automatically when a design is first disclosed in the UK or other qualifying country and will last for three years.
To qualify for either a UCD or an SUD, a design must be original or ‘novel’. However, the novelty in a design can be destroyed if it is first disclosed in any other country. If a design is first disclosed in the UK, then the owner can claim protection under an SUD, which will have effect in the UK only, but the disclosure in the UK could destroy the novelty in the design such that a UCD could not be claimed. Similarly, if a design is first disclosed in the EU, then the owner can claim protection under a UCD in the remaining EU Member States only and the disclosure may destroy the opportunity to claim an SUD.
Rights holders should therefore carefully consider where would be most appropriate to first disclose their design i.e. whether a UCD or SUD would be most beneficial for them. It is yet to be determined whether simultaneous disclosure could be an effective solution to be able to rely on both rights.
