Spotlight on UK Design Law - Part 4 – ‘First making available’ and simultaneous disclosure

England and Wales

Prior to Brexit, the ability to obtain automatic design protection across all 28 EU Member States shaped the business models and product launch strategies of many British designers. One of the most significant consequences of Brexit is that unregistered design rights can now arise only in the territory in which the design is “first” disclosed. Since the end of the transition period, many businesses have been left with the difficult choice of whether to seek unregistered design protection in the UK only, or in the remaining 27 EU Member States – as it appears that they cannot have both. For some UK businesses, the increased difficulty of protecting their designs in the EU has left them more vulnerable to infringement in some of their key markets.

The UKIPO acknowledges that the lack of an agreement with the EU to recognise reciprocal protection is a cause for concern. However, it cautions that such a step would not be straightforward. It has therefore sought views on possible alternative solutions, with simultaneous disclosure being the primary candidate.

Our view: The requirement of “first disclosure” post-Brexit has created real uncertainty and practical difficulty for design businesses operating across the UK/EU border. Alternative strategies which rely on design registration to plug the territorial “gap” will be prohibitively expensive and onerous for many businesses with large portfolios and limited resources. There is an urgent need for clarity on whether “simultaneous” disclosures are to be recognised as legally valid and whether UK and EU unregistered design rights can, in principle, co-exist.

  • We recognise that making the EU a “qualifying territory” for UK supplementary unregistered design rights would not be simple. However, we do not think it necessarily follows that unregistered design rights should be incapable of separately and concurrently existing in the UK and the EU. This is ultimately a matter for trade negotiations, but we believe there would be considerable benefits for both territories in keeping the door open for dual UK/EU unregistered design protection. It is not clear what economic benefit is gained by forcing designers to choose one or the other, when registered protection (and other forms of IP) can already be obtained in both concurrently.

  • We anticipate that the inability to hold both UK and EU unregistered design rights would deter many British and international designers from showing their new collections for the first time at UK trade shows, as this would rule out unregistered EU-wide design protection. This places the UK at a significant disadvantage to its continental neighbours and threatens the UK’s status as a hub for European design innovation. UK designers will also suffer if their unregistered designs are at risk of being copied by competitors in the EU (which comprises a much larger territory and consumer market) with impunity, simply because they were “first disclosed” in the UK.

  • We would support a new framework which requires designers to take active steps to disclose their designs in both markets, rather than ‘passively’ benefiting from automatic protection across both with a single disclosure. This should side-step any concern that protection would become territorially over-broad if a design that was only ever intended for sale in the UK was automatically protected in the EU, where it will not be exploited – and vice versa.

  • Alternative forms of protection, notably registration of designs in the non-qualifying territory, are a viable option in some cases where protection is sought for a handful of high-value designs. However, in our experience, short-term unregistered design protection is most frequently relied on as an enforcement tool by those businesses who generate large volumes of new designs for each new collection. For those businesses, replacing the “lost” unregistered design coverage with individual registrations is practically and financially unsustainable. They face a choice between higher (sometimes prohibitive) costs of protection, and suffering losses from the heightened risk of copying.

  • Simultaneous disclosure (through live-screening or online streaming) is already being used by some leading design businesses as a means of securing both UK and EU design rights. Therefore, the current uncertainty and lack of judicial guidance about the legal status of ‘virtual’ product launches is highly problematic. Businesses who opt for these legally untested solutions are taking the risk that any dual UK/EU design protection obtained in this way could later be deemed invalid by a court. Unless the position is clarified, more disputes are likely to arise as infringers take advantage of this ‘gap’ in the law.

  • In principle, we believe simultaneous disclosure is the most pragmatic alternative to direct reciprocal recognition of UK/EU disclosures. This would be subject to having clear rules on precisely which forms of disclosure would be recognised and what evidential requirements would apply in each case (for example, guidelines on how the attendance of relevant industry professionals at virtual launch events would be measured and documented). We recognise the complexities in regulating online or virtual events (such as in relation to transmission delays) but we do not consider that there should be a blanket rule against recognising disclosures made in a digital environment.

Reviewing the UK designs framework – UKIPO’s Call for Views

The legal protection of design rights in the UK is no picnic. As IP practitioners and design businesses will be all too well aware, UK design law comprises a myriad of IP rights, both registered and unregistered, protecting different types of designs and with a varying scope and term of protection. This framework has been further complicated by the introduction of new UK “spin off” design rights post-Brexit, and other changes to the legal landscape. It is no surprise, therefore, that the sheer complexity of design law is often cited by design businesses (particularly those without legal representation) as a key reason for not taking full advantage of the protection that is available to them. The UKIPO is alive to the need for simplification of the system, and the opportunities presented by Brexit to re-shape domestic design law for the future.

Between January and March 2022, the UKIPO ran a ‘Call for Views’ consultation on the reform of the UK designs framework. It invited submissions from design industry stakeholders and IP professionals on possible improvements to the current system. The consultation has now closed, and we will monitor and report on further developments as they arise.

Over the next few weeks, CMS will be exploring some of the topics covered by the consultation, and will be considering the key themes that are likely to emerge as the focus of further discussion. Please get in touch if any of these issues directly affect your business and you’d like to discuss them in confidence with our Designs team.

To view the articles in this series, click here.