Design Protection In The UK and EU After Brexit

After the end of the Transition Period, at 11.00 pm on 31 December 2020 (“implementation period completion day”, or “IP Completion Day” for short), those who currently own protection for designs in the UK, need to understand how things will change for them going forward. In particular, they need to understand how protection in the UK based on EU rights up until IP Completion Day will continue from 1 January 2021, and what strategies they need to adopt for new designs going forwards, and in particular where they should first disclose them. The key points are as follows:

• UK registered designs will continue as they are and will be unaffected by Brexit;
• Registered Community designs, which until IP Completion Day will protect the design in question in the UK, will no longer do so from 1 January 2021. However, a comparable UK registered design will be entered into the UK designs register automatically, and at no cost, effective from IP Completion Day. It will have the same scope and filing and registration date as the earlier registered Community design;
• If a registered Community design application is pending on IP Completion Day, the applicant will have 9 months from IP Completion Day to make an application for the same design in the UK, and will be able to rely on the registered Community design application’s filing or priority date;
• If registered design protection is required in the UK and the EU from 1 January 2021, it will be necessary to apply separately for protection in both;
• Unregistered UK design right, which protects the original shape and configuration (but not the surface decoration) of articles in the UK from being copied, usually for a period of 10 years from when the article is first made available for sale, will also remain largely unaffected by Brexit;
• Unregistered Community designs, however, which protect aspects of a design different to those protected by UK unregistered design right from being copied, including 2 dimensional surface decoration, as well as 3 dimensional aspects of the contours and shape of a product, will no longer provide protection in the UK after IP Protection Day;
• To provide the same protection in the UK as was provided here by unregistered Community designs before IP Completion Day, two new rights will be created. Firstly, for an unregistered Community design in existence on IP Completion Day, a “continuing unregistered design” will arise automatically in the UK on IP Completion Day, providing the same scope of protection in the UK as was previously provided under the unregistered Community design, and which will expire when the corresponding unregistered Community design expires;
• Secondly, a “supplementary unregistered design” will also be created in the UK, which will sit alongside the UK unregistered design right, and provide the same protection which, were it not for Brexit, would have been provided by an unregistered Community design here;
• People in the UK will still be able to secure protection for their designs in the EU under an unregistered Community design after IP Completion Day, but a very important question is whether this will only be available if the design in question is first made available to the public (e.g. at a trade show) in the EU, which many practitioners believe the law currently requires. From 1 January 2021, if a UK designer first makes a design available in the UK, that will no longer satisfy the “first make available in the EU” test, and is likely to deprive them of EU wide unregistered design protection. They will secure protection in the UK, as first making the design available in the UK will be a requirement to obtaining the supplementary unregistered design here, but the UK has made clear that this UK right will not be available to designs first made available to the public in the EU after 1 January 2021. So those who do business in both the UK and some or all of the 27EU member states, are likely to have to choose between first making their designs available and securing protection here, or first making their designs available and securing protection in the EU. They are unlikely to be able to secure this form of protection in both, unless first making the design available via the internet on web pages which are targeted at both the UK and the EU, is determined by the courts or recognised in legislation as constituting a simultaneous first making of the design available in both the UK and the EU. Until this occurs, and if protection is required in both the EU and the UK, then the safest course will be to register the design in whichever of the two locations the design was not first made available.

The above provides a very broad outline of the key issues relating to the impact of Brexit on design protection in the UK and EU. If you require detailed advice on any issues related to this very important and somewhat complex topic, please contact a member of our IP Team.