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On 31st January 2020, the United Kingdom ceased to be a member of the European Union. However, most EU law continued to apply to the UK during the transition period as if they were still a member state. The transition period ended on 31st December 2020, which has affected design rights which are a form of intellectual property.
Before we deal with the impact Brexit has had on design rights, it is helpful to recap what design rights are. Designs are a form of intellectual property. They protect the appearance, shape and configuration of a product and can be registered or unregistered. Design protection can currently be obtained through a registered right or an unregistered right in the following ways:
Registering a design is relatively low-cost and can be appropriate for industries such as fashion, where design is fundamental in recognising and selling the product.
Design rights give the designer the exclusive right to reproduce the product and record its design to reproduce it. There will be a primary infringement of a design right if the designer's design is reproduced or recorded without the designer's permission.
As of 1st January 2021, Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) will no longer be valid in the UK. As set out below, Brexit had had a different impact on RCDs and UCDs depending on their status when the transition period ended on 31st December 2020.
All RCDs which were registered and published as of 1st January 2021 will be given a fully equivalent UK right known as a re-registered design. The UK re-registered design will have the same original filing, priority, seniority, and renewal dates as the original EU registration. As a fully independent UK right, re-registered designs can be challenged, assigned, licensed, or renewed separately from the original RCD. Re-registered designs are created at no cost to the RCD holder, and no forms are required to be filed with the IPO.
Please note that it is possible to opt-out of the re-registration process as long as you have not already assigned, licensed, or entered into an agreement related to the re-registered design if you have already launched court proceedings based upon it.
Once re-registered UK design rights are created, separate renewal fees will apply for both the re-registered UK design and the corresponding RCD.
These fees will have to be paid separately to both the IPO and the EUIPO, respectively. Both UK registered designs, and RCDs can be renewed every five years up to a maximum of 25 years. Please note, however, that where the re-registered design will expire within six months after 1st January 2021, the usual renewal fee will not be payable.
On 1st January 2021, a small number of RCD applications were still pending or had been deferred in the EU system. Holders of any pending or deferred RCD application on 1st January 2021 can apply to register a UK design up to and including 30th September 2021.
The UK application must relate to the same design filed in the pending or deferred RCD application. The UK application will be treated as a UK registered design application and will be examined for suitability under UK law.
Please note that filing fees will also be payable in respect of the UK application.
A re-registered design will be created in respect of any RCD which expired in the six months before 1st January 2021. The re-registered design will have an "expired status". If the RCD is subsequently renewed, the re-registered design will also be automatically renewed. In this scenario, you will not be required to pay any renewal fees regarding the first UK renewal of the re-registered design.
If the RCD is not renewed, then the re-registered design will be removed from the UK register once removed from the EU register.
Under the Community Design Regulations, a design right that has been struck from the EU register because of the rights holder's failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.
Re-registered designs will only be created from RCDs, which are registered within six months of their renewal date, before 1st January 2021. Therefore, EU rights that are not registered on that date but which are subject to reinstatement will not automatically result in the grant of a re-registered design. In such circumstances, where an RCD is reinstated after 1st January 2021, and the rights holder notifies the IPO of the same within six months of reinstatement, a re-registered design will be created.
Third parties can challenge registered designs through invalidation proceedings. If invalidation proceedings succeed, then the design right is removed either partially or fully from the register. If an RCD is declared invalid, then the corresponding UK re-registration right will also be declared invalid.
After 31st December 2020, Unregistered Community Designs (UCDs) were no longer valid in the UK. However, the existing rights will be automatically replaced by UK Continuing Unregistered Designs (CUDs). The CUD will continue to be protected in the UK for the remainder of the 3-year term of the UCD.
The UK Unregistered Design Right (UKUDR) legislation does not mirror the UCD legislation, and therefore some designs that would have attracted UCD protection will not meet the requirements of UKUDR protection. The UK is creating new UKUDR legislation to address this issue, which will create Supplementary Unregistered Designs (SUDs).
This is to try and ensure full protection is continued in respect of unregistered designs in the UK.
For unregistered designs, it is the location of the first disclosure of the design which dictates where such rights exist. The EU has confirmed that after 30th December 2020, designs first disclosed in the UK will no longer be eligible for protection as UCDs. First disclosure in the EU will continue to provide EU-wide unregistered design protection, but that will not include the UK.
In contrast, the first disclosure of a UK design will only provide unregistered design protection in the UK.
Unfortunately, this will create considerable challenges for UK designers, particularly in the fashion industry and other fast-moving sectors that rely on unregistered design protection rather than incurring the fees and administrative steps required to register a design. It may be possible to achieve simultaneous UK and EU disclosure, but the Courts are likely to decide its effectiveness, which creates uncertainty for designers. For certainty, if design protection is required in both the UK and the EU, design owners will have to decide whether to disclose in the UK or the EU first and then seek registered protection in the other territory or whether to register its design in both the UK and the EU.
Here at Myerson Solicitors, we have a specialist Intellectual Property Team that can advise on all aspects of registering, protecting, and exploiting intellectual property rights, including designs. This puts you in control as to how your intellectual property rights are used. If you need any more information or assistance, you can contact us on 0161 941 4000 or email The Intellectual Property Team.