Brexit update: Designs

With the withdrawal agreement ratified in late 2019, the UK formally left the European Union on 31 January 2020, entering an additional 11 month transition period.

While this brings about changes for the UK’s relationship with Europe, your relationship with Potter Clarkson will not change in any way. It will not disrupt the services we provide to you – it is business as usual. As a pan-European intellectual property law firm, with offices in multiple EU-member states, our ability to support clients in all aspects of IP is completely unaffected by any Brexit-related changes. 

With many clients facing uncertainty surrounding Brexit and with the departure date of 31 December 2020 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 ’PER THE WITHDRAWAL AGREEMENT

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 national 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.

The UK Intellectual Property Office (UK IPO) is ensuring that minimal administrative burden will be placed upon the right holder to bring the new cloned rights into existence. Presently we anticipate that at most a simple application process will be put in place and we can help you with the application process.

The new cloned UK right will have its own prefix designation (“9”) added to its RCD number to show that it is a cloned registration and will come into force on 1 January 2021.

Key points to note about the new UK right:

  • The UK IPO 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 is 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 RCD renewal dates.
  • The new UK right may form the basis for proceedings before the UK Courts and the UK IPO.
  • The new UK right will be assignable and licensable independently of the corresponding EU design right.

PENDING RCD APPLICATIONS

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 filing costs 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

Whilst it is possible to renew RCDs within 6 months prior to their renewal dates, it will not be possible to early renew RCDs to avoid paying for renewal of the cloned UK right. Where the cloned UK rights fall for renewal within the first 6 months of 2021, renewal of the corresponding RCD will not be considered renewal of the cloned UK right.

UNREGISTERED COMMUNITY DESIGNS (UCDS)

UCD RIGHTS ‘PER THE WITHDRAWAL AGREEMENT

Designs that are protected in the UK as an UCD right before 1 January 2021 will be protected as a UK continuing unregistered design right.  Such UK continuing unregistered design rights will be automatically established on 1 January 2021.

Key points to note about continuing UK design rights:

  • The continuing unregistered design right will be provided without any need for action by rights holders (it will be automatically established).
  • The continuing unregistered design right will be separate from any existing UK unregistered design right (UKUDR).
  • The protection of the continuing unregistered design right will last for the remainder of the 3 year term of protection of the original UCD right.

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.