IP Information & News

How will design protection work after Brexit?

Gareth Price

By Gareth Price

Partner

The UK government recently published a draft statutory instrument called 'The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019' ("The Design Exit Regulations"). This details the post-Brexit procedure for unregistered and registered design protection. Here's a breakdown of what this means for you.

When does it come into force?

The Design Exit Regulations comes into force on Brexit Day, the day the UK leaves the European Union. If the UK leaves the EU with ‘no deal’, this will be 11pm on 29 March 2019. If we do reach a deal, this will be the end of the transition period, which is currently pencilled in as 31 December 2020.

What’s going to happen to Registered Community Designs?

Holders of Registered Community Designs (RCDs) will be granted comparable rights in the UK.

Some of the key points of The Design Exit Regulations are:

  • These rights will be known as a ‘re-registered design’.
  • The ‘re-registered design’ will share the filing (including priority) and registration dates of the RCD.
  • There will be no fee to obtain the ‘re-registered design’.
  • There’s no opt-in procedure — it’s simply going to happen.

The ‘re-registered design’ will appear in the UK register "as soon as reasonably practicable after [Brexit] day".

Can you opt-out of the ‘re-registered design’?

The short answer is yes. However, in the following circumstances, this will not be available:

1. If on or after Brexit day the ‘re-registered design’ is subject to an assignment, licence, security interest or other recordal.

2. If proceedings have been commenced relying upon the ‘re-registered design’.

Pending RCDs

If your RCD is pending on Brexit day, it will not become a ‘re-registered design’. Instead, you’ll have nine months to file a new UK Registered Design application. You’ll be entitled to claim the same filing date (or priority date) as the RCD. This is the case irrespective of when the RCD was filed. The UK Registered Design application will be subject to the payment of filing fees. However, in view of the speed with which the EUIPO grants RCDs, we would recommend that any applications which you’re considering making are filed as soon as possible.

What’s going to happen to EU designations of International Designs?

As with RCDs, holders of EU designations of International Designs will be granted comparable rights in the UK.

Some of the key points of the regulations are:

  • These rights will be known as ‘re-registered international design’.
  • These rights will be national UK registered designs — i.e. they will not be designations of the International Design and, therefore, will need to be renewed separately.
  • The ‘re-registered international design’ will share the filing (including priority) and registration dates of the EU designation.
  • There’ll be no fee to obtain the ‘re-registered international design’.
  • There’s no opt-in procedure — it’s simply going to happen.

A holder of an EU designation can opt-out of the ‘re-registered international design’ unless the circumstances set out in the above ‘re-registered design’ apply.

Agreements and licences

Agreements and licences which cover RCDs will cover the ‘re-registered design’, unless there’s evidence that such documents weren’t intended to have effect in the UK.

Renewals

Renewals will stay in-line with existing UK trade mark renewal procedures. For any ‘re-registered design’ due for renewal in the first six months after Brexit, the UK Intellectual Property Office (UKIPO) will write to notify you of the expiration and you’ll have six months from receipt of that notice to renew.

Infringement proceedings

Actions for registered design infringement before the UK courts based on a RCD will be able to continue, but the Court will effectively swap out the RCD for the ‘re-registered design’. This will diminish the scope of any relief being sought, as the UK courts will no longer be able to grant pan-EU injunctions.

In contrast, any existing injunction-prohibiting acts in the UK on the basis of a RCD will continue to be enforceable, with the ‘re-registered design’ being the basis for the injunction.

Unregistered Community Design Rights

The Design Exit Regulations provide that an Unregistered Community Design Right in existence prior to Brexit Day will continue to have effect in the UK after Brexit Day and for the same term as the EU right.

The UK Courts will continue to hear pending infringement cases and may grant an injunction to prohibit the unauthorised use of the unregistered Community Design.

Supplementary Unregistered Designs

The Design Exit Regulations pave the way for a new ‘supplementary unregistered design’ in the UK. This will protect any new designs made available to the public in the UK, a qualifying country or a qualifying territory after Brexit Day.

The supplementary unregistered design will work in a similar way to existing Unregistered Community Design Rights, but will extend to the UK only. The supplementary unregistered design will protect any design which doesn’t produce a different overall impression on an informed user, taking the degree of freedom of the designer into consideration.

The term of supplementary unregistered design will be three years from the date on which the design was first made available to the public in the UK, a qualifying country or a qualifying territory. It’s for the Secretary of State to define ‘qualifying country’ and ‘qualifying territory’. We’ll be providing a more detailed article about supplementary unregistered designs in the near future.

Seek advice

I’ve written generally about Brexit and IP rights as well as what’ll happen to .eu domain names if the UK doesn’t reach a deal with the EU.

Feel free to get in touch with me at gip@udl.co.uk if you need specific guidance around how Brexit will affect your IP rights.

For more information about what happens to IP rights after Brexit, visit our dedicated one-stop-shop information page.

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