Brexit update - designs

The UK Government and the European Union are working on a number of possible scenarios for Intellectual Property rights depending on whether a ‘deal’ or ‘no deal’ Brexit occurs.

Given the current uncertainty surrounding Brexit and with the departure date of 29 March 2019 fast approaching, we have set out below the position as it currently stands together with our recommendations to ensure design rights remain protected.

UK NATIONAL DESIGN RIGHTS

UK national design rights will be unaffected by the UK’s departure from the EU. This means that any design rights, including International or Hague Agreement Design Registrations (WIPO), that designate or were filed in the UK will continue to apply in the UK. The UK will also continue to be available as a designated state of a WIPO Design Registration after the UK leaves the EU.

REGISTERED COMMUNITY DESIGNS (RCDS)

RCD RIGHTS IF THERE IS A 'NO DEAL'

The UK Government has undertaken to ensure that rights in all existing RCDs will continue to be protected and be enforceable in the UK, by providing equivalent design registrations in the UK. This new “cloned” right will be granted at no official cost, but the new UK right will require its own renewal, along with the renewal of its corresponding RCD right (please see below re imminent RCD renewal dates).

The UK IPO has not yet indicated what level of formality will be required to bring the new cloned rights into existence. Presently we anticipate that at most a simple application process will be put in place and that we can help you with the application process at reasonable fees.

The new cloned UK right will have its own prefix designation added to its RCD number to show that it is a cloned registration and will come into force at 11pm (UK time) on 29 March 2019.

Key points to note about the new UK right:

  • The UK Intellectual Property Office (UKIPO) will notify rights holders that a new UK right has been created, by issuing a notice on its website.
  • If you do not wish to receive a new “cloned” UK right, it will be possible to opt out. This may be necessary if, for example, the existence of a UK registration would contravene an agreement that is in place with a third party.
  • The cloned right provisions will apply to WIPO Design Registrations designating the EU, which therefore also will be cloned into separate national UK rights.
  • We will not opt-out any registered designs on your behalf unless we are specifically instructed to do so.
  • As mentioned the new UK right will be subject to renewal in the UK. We will add the new UK right on to our records and capture the renewal deadline. Please see below re imminent RCD renewal dates.
  • The new UK right may form the basis for proceedings before the UK Courts and the UKIPO.
  • The new UK right will be assignable and licensable independently of the corresponding EU design right.

RCD RIGHTS IF THERE IS A DEAL

The no deal provisions will also apply if the current terms of the Withdrawal Agreement are implemented. The main difference is that the Withdrawal Agreement provides for a transition period ending on 31 December 2020 at the earliest.

The no deal provisions, if a deal is achieved, will not come into force until after the transition period.

PENDING RCD APPLICATIONS WHETHER THERE IS A DEAL OR 'NO DEAL'

For any RCD applications which are still pending at the point of exit there will be a 9-month window in which applicants will be able to re-file the applications in the UK. This will also be the case for EU designations under the WIPO Registration system if UK protection is required.

The key points to note are as follows:

  • Filing within this 9-month window will maintain the filing/priority date of the corresponding RCD application.
  • The new UK application will be subject to the usual application cost of a new UK application.
  • Applicants will not be notified of this 9-month window by the UKIPO. We have, therefore, entered the deadline on our systems and will issue appropriate reminders.
  • We will not re-file a new UK application without your specific instructions.

RCD RENEWALS

As it is possible to renew RCDs within 6 months prior to their renewal deadlines, we recommend that all RCDs that are due for renewal before 29 September 2019 (and are still of interest) are renewed before 29 March 2019. This means that it will not be necessary to pay separate renewal fees for the RCD and the cloned UK registration. We are preparing a schedule of cases that will be captured by this and will contact you separately, as necessary.

UNREGISTERED COMMUNITY DESIGNS (UCDS)

UCD RIGHTS IF THERE IS A 'NO DEAL'

The UK Government will aim to ensure that rights in all existing UCDs will continue to be protected and to be enforceable in the UK, by providing an equivalent unregistered design right in the UK.

Key points to note about the new UK right:

  • The equivalent unregistered design right will be provided without any need for action by rights holders.
  • The equivalent unregistered design right will be separate from the present UK unregistered design right (UKUDR).
  • The protection of the equivalent unregistered design right will last for the remainder of the term of protection of the original UCD.

The UK Government will also create a new unregistered design right in UK law. This new right will be known as the supplementary unregistered design right (SUDR). Any design first made available within the UK, a qualifying country or a qualifying territory after the point of exit will be automatically protected in the UK under the SUDR. The characteristics of the SUDR will mirror the characteristics of the UCD.

UCD RIGHTS IF THERE IS A DEAL

The no deal provisions will also apply if the current terms of the Withdrawal Agreement are implemented, but will not come into force until after any transition period agreed in relation to the UK’s exit from the EU.