Brexit – are you prepared? Changes to the protection of unregistered designs from 1 January 2021

United Kingdom

Following the end of the Brexit transition period on 31 December 2020 (Exit Day), UK businesses who previously relied on Community Unregistered Design Right (CUDR) may no longer benefit from this valuable form of protection for their designs.

Existing CUDR rights which arose before Exit Day will remain in force in the UK as “Continuing Unregistered Designs” for the remainder of the original CUDR term (in tandem with the existing CUDR which will remain valid in the remaining 27 EU Member States until expiry). However, from Exit Day, any new designs first shown in the UK will no longer be protected in the EU by CUDR.

The UK Government has created a new Supplementary Unregistered Design Right (SUDR) to protect such designs after Exit Day, but that protection will apply in the UK only. Therefore, SUDR will not provide an effective replacement for CUDR for businesses who still need protection for their designs in the EU after Brexit.

Those businesses now face the dilemma of deciding where to launch their new designs after Exit Day:

  • Whilst a ‘first showing’ of a design in the UK will establish domestic SUDR protection, it will no longer attract CUDR protection in the EU; and conversely, designs first shown in the EU will not be eligible for SUDR protection in the UK.

  • Furthermore, a first disclosure in the UK will destroy the novelty of the design, meaning it cannot separately qualify for EU protection – and vice versa.

  • It therefore seems that it is not possible to hold both CUDR and SUDR rights in the same design.

Businesses who require protection for their designs in both the UK and the EU after Exit Day therefore need to review and change their practices now, to ensure their designs are sufficiently protected. Unless UK designers take proactive steps to register their designs at EU level, they will be unable to prevent plagiarists from copying them in the EU.

Likewise, EU designers will not automatically qualify for design protection in the UK after Exit Day and should consider filing UK design registrations. In the absence of an agreement between the EU and UK on mutual recognition of ‘first disclosures’, UK and EU designers alike may need to rely on design registrations in both territories and/or formulate strategies to ‘first disclose’ their designs in one market and register them in the other.

A further change to UK design law arising from Brexit is the amendment of the qualification criteria for designs to attract traditional UK unregistered design right (UK UDR) under the Copyright, Designs and Patents Act 1988 (CDPA):

  • Foreign works can attract UK UDR protection provided that the designer is a “qualifying person”, i.e. habitually resident or incorporated in a “qualifying country”, or alternatively where the design is first marketed in a “qualifying country” by a “qualifying person”.

  • “Qualifying country” previously included all EU Member States. With effect from 31 December 2020, this is no longer the case and references to EU Member States have been struck out from sections 217 and 220 of the CPDA.

  • In practice, and subject to any contrary provisions that may arise from the EU/UK Trade & Cooperation Agreement (once enacted), this is likely to mean that an increasing number of designs which originate from the EU will not be protected by UK UDR, and European designers will need to seek other forms of protection for their designs in the UK.

We have a dedicated Designs team as part of our IP practice who would be delighted to speak with UK or EU businesses about these changes, learn more about your Brexit plans and discuss appropriate strategies that you can put in place. If that would be of interest, please do let us know.