UK government guidance on European Designs in the event of “no-deal” Brexit

United Kingdom

On 24 September 2018, the UK Government published long-awaited guidance on how certain aspects of design protection, and in particular EU design applications, will be treated in the event that no Brexit deal has been agreed prior to the UK’s exit from the EU on 29 March 2019. This guidance is part of the “series of technical notices setting out information to allow businesses and citizens to understand what they would need to do in a ‘no deal’ scenario”. It is important to be aware that the published note is for guidance, only. It is not statutory legislation. The UK Government intends to pass “technical changes through statutory legislation in Parliament over the coming months”.

Registered European Designs (RCDs)

Registered European Designs shall enjoy continued protection and enforceability in the UK – however, the guidance note states that protection will be equivalent to UK design registrations. They will retain their priority date and will be treated as if they had originally been filed and registered “under UK law”.

Right holders will obtain UK registered design protection automatically. Right holders who do not wish to retain UK protection will be able to opt out of UK design protection.

European Design Applications

Owners of EU design applications shall have a nine month period from the date of exit (currently 29 March 2019) to apply for equivalent UK registered design protection – retaining the EU priority date. The usual UK application process and UK filing fees for designs will apply.

Right holders of pending EU design applications will not be notified by the registries. There is no automatic continuity of application proceedings. It will be up to applicants (and their representatives) to take appropriate positive action.

International Design Applications and Registrations designating the EU

The UK government intends to discuss continued protection in the UK of International design registrations and applications designating the EU with the World Intellectual Property Organisation (WIPO). This means that, currently, no guidance for protection in the UK of International design rights designating the EU is available.

Unregistered Community designs first disclosed prior to Brexit

Unregistered Community designs which have been first disclosed in the EU prior to Brexit shall remain protected and enforceable in the UK after Brexit for the remaining period of its three year protection.

Unregistered Community designs will retain their protection automatically without any action having to be taken by right holders.

Unregistered designs first disclosed in the UK after Brexit

The UK government intends to introduce a so-called “supplementary unregistered design right” which shall mirror the scope of protection of the unregistered Community design right. This new right will extend the current UK unregistered design protection, which protects three-dimensional aspects of a design only, such as product shape and configuration, to also cover two-dimensional aspects currently only protected by the unregistered Community design, such as surface decoration. 

Unregistered design protection will arise automatically. No positive action by right holders is required.

In particular the fashion industry who are currently relying heavily on the protection of unregistered Community designs should be re-assured by this guidance note. However, future designs first disclosed in the UK will only enjoy unregistered design protection in the UK. To also enjoy EU-wide unregistered design protection designers will have to consider disclosing their designs simultaneously in the UK and the EU.