Supplementary uncertainty for UK designers

Why a new UK Supplementary Unregistered Design Right is a poor consolation prize for the loss of the Community Unregistered Design protection in post-Brexit Europe.

Community Unregistered Design Right (CUDR) currently confers EU-wide protection for new designs that are first made available in the UK. Many British designers rely on this valuable EU right to fight copycat products sold across the EU, particularly those designs which feature surface decoration, something not currently protected by domestic UK design right. Importantly, CUDR also allows British businesses to enforce their design rights on an EU-wide basis.

After Brexit, designs first shown in the UK may no longer qualify for CUDR protection.

CUDR arises when a new design is “first made available to the public within the Community”. However, EU case law is unsettled on whether the disclosure must take place physically within the territory of an EU member state, or whether it is sufficient for that disclosure to become known to the circles specialised in the sector concerned in the EU. In particular, the German Supreme Court has taken a restrictive view, which would limit protection to disclosures taking place within an EU member state.

There is therefore doubt that designs first shown at a UK trade show (such as London Fashion Week) will attract CUDR protection after Brexit. Conversely, a disclosure in the UK that is likely to come to the attention of the relevant commercial sector operating within the EU is likely to destroy the novelty of a British design, making it ineligible for CUDR. This could deter many British and international designers from showing their new collections at UK trade shows, if this would jeopardise their right to CUDR. The uncertainty places the UK at a significant disadvantage to its continental neighbours and threatens the UK’s status as a hub for European design innovation.

A new right: Supplementary Unregistered Design Right

The UK Government recently announced that, in the event of a “no-deal Brexit”, the UK would create a new unregistered design right – to be known as the “Supplementary Unregistered Design Right” (SUDR) – which would mirror the characteristics of the CUDR. This would usefully plug a ‘gap’ in UK design law, which currently provides inadequate protection for two-dimensional design features, particularly surface decoration.

However, the scope of the new SUDR would be too limited to provide an effective replacement for CUDR post-Brexit.

The new SUDR would only protect unregistered designs in the UK. British designers wishing to rely on this new right will be unable to enforce it anywhere else in the EU, unless EU courts agree to recognise UK design rights by way of a bilateral treaty. In view of the slow progress of the Brexit negotiations, this seems unlikely to be at the top of the agenda.

Although no draft legislation has yet been published, it also seems likely that SUDR would require the design to have been “first made available in the UK”. If so, any designs launched in the EU post-Brexit might not qualify for this new SUDR, and prior disclosures in the EU could be novelty-destroying, depriving the design of SUDR protection. Moreover, if the ‘first made available’ rule was applied strictly to require a disclosure physically within the borders of the UK or the EU, both rights could never apply to the same design. British designers would have to choose one or the other. Even if this rule was relaxed – and it was always sufficient for the design to have ‘become known’ to the relevant trade circles in the relevant territory – designers would still face a new evidential burden to be able to claim both rights.

The introduction of the SUDR does not resolve the loss of British designers’ ability to protect and enforce their designs seamlessly across the Channel.

They face a difficult choice between launching in the UK (and risking the loss of CUDR protection) or launching in the EU, potentially forfeiting their right to SUDR. In view of this uncertainty, designers should urgently review their launch strategies in the lead-up to Brexit.

Without clarification from EU courts on the territorial requirements for CUDR protection, it is unsafe for British businesses to assume that a launch in the UK – no matter how high-profile – will satisfy the “making available within the Community” test to confer CUDR protection for a British design after Brexit.

Practical tips for designers – at home and abroad

The loss of CUDR in the UK will be felt by designers on both sides of the Channel. Whilst British businesses will be disadvantaged by the loss of automatic entitlement to CUDR, designers based in the EU will have the territorial reach of their CUDR protection significantly reduced since it will no longer cover the UK, an important market for fashion goods. Without reciprocal protection, designs originating from the EU will not be enforceable against copycats operating in the UK. Those designers would need to take steps to protect their designs in the UK separately.

Possible fall-back strategies for securing both UK and EU protection for unregistered designs include:

• simultaneous product launches in the UK and EU,
• live screening of UK-based launch events at locations within the EU, or vice versa;
• real-time live streams of UK launch events that are accessed and viewed by EU industry representatives, or conversely, live streaming of EU launch events in the UK.

In an ideal world, designers should aim to gather clear evidence to demonstrate that their launch event was in fact attended or viewed by people from the relevant trade circles operating in the UK or EU (as applicable). This will allow them to argue that their designs were “first made available” in the relevant territory at their launch event.

A further backup option is design registration. Both the UK and the EU design registration systems are available to designers regardless of nationality or location. Accordingly, it is open for UK designers to file EU design registrations to secure pan-EU protection for key designs. Businesses based in the EU can likewise file UK registered designs to protect their designs there. Although enforcement action would still need to be taken separately in the UK and the EU, a registered design will be a valuable tool to fill potential ‘gaps’ in protection where both CUDR and SUDR cannot be secured. As both registers currently allow a grace period of 12 months from first publication to register a design, businesses operating across the EU border could also use a combination of strategic product launches and design registrations to secure the relevant rights. However, whilst they are relatively easy to obtain, in most cases it will be impractical and expensive to protect entire collections through design registrations. In fast-moving industries (notably fashion) where new designs are launched frequently and for a short season, designers will therefore need to be selective in choosing which designs to register.