Brexit and Design Rights: What will happen to designs which are first disclosed in the UK at the end of the Brexit transition period?

Unregistered Designs first published in the UK will no longer be eligible for EU protection.

Since 2002, UK businesses have been able to protect their unregistered designs by virtue of both UK and EU unregistered design rights, conferring parallel but slightly differing forms of protection. The current UK unregistered design right, which applies to the shape and configuration of three-dimensional designs, is an automatic right which provides designers with protection from unauthorised copying in the UK (for the earlier of ten years from the end of the year in which articles to the design were first marketed or fifteen years from the end of the year in which the design was first recorded). As it stands, such right is also automatically protected in the EU as an Unregistered Community Design (UCD) for a period of three years from the date it was first disclosed to the Community.

The EU has now, following many months of discussions with the UK Intellectual Property Office and the UK government, confirmed that, at the end of the transition period, UK businesses will only be eligible for unregistered design protection in the territory of first disclosure. It is not entirely clear whether it may be possible to seek registered EU design protection within the grace period, even if the design was first disclosed in the UK.

This article considers the implications for UK businesses which first disclose their designs in the UK and what happens to these design rights at the end of the transition period currently forecast for 31 December 2020 at 11pm UK time (“Exit Day”).

The Rules Relating to Unregistered Design Rights on Exit Day

The EUIPO defines ‘disclosure’ as making a design available to the public in such a way that the interested circles operating within the EU can reasonably be aware of the design. Following Exit Day:

• First disclosure of a design in the EU will continue to provide EU-wide unregistered design protection (not including the UK).
• By contrast, first disclosure in the UK will only provide unregistered design protection in the UK as well as reciprocal protection in other qualifying countries (as defined in The Design Right (Reciprocal Protection) (No. 2) Order 1989).

This means that designers who first disclose their unregistered designs in the UK will need to think of different ways to secure EU protection on Exit Day. More significantly, this could deter many British and international designers from showing their new collections for the first time at UK trade shows, if this could jeopardise their right to EU-wide protection. 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. Designers therefore face a difficult choice between launching in the UK or launching in the EU. In view of this uncertainty, designers should urgently review their launch strategies in the lead-up to Exit Day.

Two new UK Unregistered Design Rights

The UK government is introducing two new design right regimes:

1. the UK Continuing Unregistered Design (CUD); and
2. the Supplementary Unregistered Design (SUD);

The CUD

From 1 January 2021, UCDs will no longer be valid in the UK and each such right that is protected in the UK prior to Exit Day will instead be automatically protected as a CUD. Any CUD will continue to be protected in the UK for the remaining part of its three-year term. It is worth noting that the validity of a CUD will not be affected by the fact that a corresponding UCD was established through first disclosure in the EU (but outside of the UK) provided that it was established prior to 1 January 2021.

The SUD

With regard to the second new design right, the SUD, this will provide similar protection to that afforded by the UCD but only within the UK and qualifying countries. This right will be established by first disclosure in the UK or in a qualifying country and it will mirror the UCD in providing UK protection for designs for a three-year period. UK designers and businesses will need to consider that first disclosure in the EU will not establish an SUD and, in fact, such disclosure in the EU could destroy the novelty of the design in the UK. This could present a challenge should the UK individual or entity seek to establish UK unregistered design rights in the design.

Points to Consider

Businesses that rely on unregistered designs at both UK and EU level will now need to consider ways in which to respond to the challenges raised by this outcome. Designers may wish to consider other forms of intellectual property right which can protect their designs or, where possible, consider relying on registered design rights.

The option of registering a design in the EU or the UK is still available to UK businesses during the 12-month grace period following first disclosure. Further, businesses may wish to begin thinking about ways to achieve simultaneous disclosure in both the UK and the EU, although the effect of this option under the new regime is not yet clear.

Article co-authored by Paradis McCall.