The UK officially left the EU on 31st January 2020. By virtue of the transition period in the Withdrawal Agreement, EU law will continue to apply in and in relation to the UK only until the 31st December 2020. The EU Treaties, EU free movement rights and the general principles of EU law will then cease to apply in relation to the UK, and prior EU regulations will only continue to apply in domestic law (by virtue of the European Union (Withdrawal) Act 2018) insofar as they are not modified or revoked by regulations under that 2018 Act.
Leaving the EU will have significant consequences in many areas of trade and commerce which are governed to some extent by EU law. This is particularly so in the case of designs which have for many years benefited from availability under EU law of both registered and unregistered unitary 'Community' rights, enforceable throughout the EU.
In practical terms, nothing will change until the transition period ends on 31 December. EU-wide rights (both Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs)) will continue to have effect and be enforceable in the UK until then. However, thereafter important changes will kick in, for which businesses need to be prepared.
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 both the requirements for validity and the rules for infringement. The UKRD regime will continue in force unaffected by Brexit.
At the end of the transition period however, RCDs will cease to have effect and be enforceable in the UK. To compensate for this gap in protection, the UK has agreed that all RCDs that are registered and fully published as at 31 December 2020 will be duplicated onto the UK designs register as equivalent national UKRDs. This will happen automatically and there will be no cost to holders. The new UKRDs will immediately be deemed registered (i.e. they will not have to go through a separate national registration process). They will retain the application, registration and priority dates of the RCDs.
For RCDs that are either still pending applications on 31 December or which are 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.
- 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.
Whilst there will be no overall loss in registered protection there are some practical points to note:
- 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 their 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 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 is a critical weapon for those companies for which design registration is not practical, either due to the cost of filing or the short expected lifetime of their designs. The impact of Brexit on the unregistered design protection regime is more complex than for the registered design protection regime, and opens up the possibility of a gap in protection for holders.
National UK design law already provides for a UK unregistered design right (UKUDR) under the Copyright, Designs and Patents Act 1988 (which will continue largely unaffected by Brexit). However, this right does not mirror the UCD right which exists under EU law. For instance, UCD protects the appearance of the whole or a part of a product (so 2D or 3D designs) for 3 years, whereas UKUDR only protects shape/configuration but not surface decoration (so effectively only 3D designs) for 10 or 15 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. Finally, for UKUDR, there are a number of complex 'qualification' criteria which in some cases mean that designs created by non-EU designers will not qualify for UKUDR protection at all. 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, at the end of the transition period when UCD will cease to have effect and be enforceable in the UK, many designs which would previously have benefitted from UCD protection could be left unprotected.
To avoid this problem, the UK will create two new types of UK unregistered design rights which come into effect after the end of the transition period:
- Continuing Unregistered Design (CUD)
- Supplementary Unregistered Design (SUD)
Both of these new rights will mirror the UCD right in terms of validity, infringement and term.
The CUD right is intended to prevent any loss in protection in the UK for any UCD which existed at end of the transition period right and still had time left to run. The CUD right will continue to protect the design automatically in the UK for the time remaining of the original 3 year UCD 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 to take effect after the transition period ends to take account of the fact that the UK will no longer be in the EU).
The impact on unregistered design protection of location of first disclosure
Under the current EU design legislation, it is likely that new designs first made available to the public (e.g. displayed at a trade show) outside the EU, will not be entitled to UCD protection entitlement which they might have enjoyed had they first been disclosed inside the EU. There is currently some uncertainty around this point, and a reference has been made to the CJEU from the UK IPEC court to try to clarify the position.
If it is the case that a first disclosure outside the EU means a design is deprived of UCD protection, this will also mean that a new design first displayed within the UK after the end of the transition period will not attract UCD protection in the EU (although it will attract SUD protection in the UK). However, the UK has been clear that if the first disclosure takes place in the EU, SUD protection will not be granted in the UK. This creates a serious problem for businesses operating in both the UK and the EU who rely on unregistered design rights. Until the end of the transition period a first disclosure in the EU results in unregistered protection in both territories (i.e. both UCD rights (immediately) and CUD rights (after the end of the transition period)). However, from 1 January 2021 first disclosure in one of these territories will almost certainly preclude the establishment of unregistered rights in the other. To ensure protection in both territories registration will be needed in the one that is not chosen as the location of first disclosure. Failure to register in that territory will mean a complete lack of protection (unless your designs happen to qualify for either copyright or UKURD protection). This could have serious consequences and increases the importance of seeking protection for commercially valuable designs.
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 legal landscape 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 a registered right and four different unregistered rights (if one includes copyright) potentially coming into play. Business will need to be well prepared for these changes.
- Nothing will change until the end of the transition period on 31 December 2020.
- All RCDs that are registered and full published will be duplicated onto the UK register at no cost.
- 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.
- New types of unregistered design rights are to be introduced in the UK.
- After the transition period ends if you need protection in both the UK and the EU you will need to seek it in each.
- For registered rights this means filing in both.
- For unregistered rights, the location of first disclosure will dictate where such rights exist. It will not be possible to hold both UCD and SUD rights for the same design. If protection is required in both the UK and the EU protection will only be possible by disclosing in one and registering in the other (or registering in both if first disclosure is elsewhere).