Designs – including industrial designs and designs for consumer goods and fashion - are protected in the UK by both registered and unregistered design rights. This continues post Brexit with some adjustments to reflect the UK’s split away from the European intellectual property framework. Whereas in the registered designs sphere the changes provide an equivalent level of protection, changes to unregistered designs law are more problematic and potentially leave right holders more exposed. As a result, it is more important than ever to consider registration of key designs where this is practical.
Registered Community designs (RCDs) converted to UK rights
As a result of Brexit, the pan-European Registered Community Design (RCD) is no longer enforceable in the UK. To compensate RCD holders for the loss of UK protection, UK national rights, known as ‘re-registered’ design rights, have been granted free of charge in respect of all RCDs existing at 31 December 2020. These now appear on the UK designs register, and the priority date of the original RCD has also been transferred. No certificates of registration will be issued, but ownership can be evidenced by an extract from the register. Ownership is not limited to UK designers or businesses.
RCD owners have nine months to preserve priority of pending applications
If your application for a RCD was still pending at 31 December 2020, that application no longer includes the UK but continues in relation to the EU27. However, you may apply for the same design as a UK national registration within nine months from 1 January 2021 preserving the priority of your original RCD application. This priority gives you the right to oppose conflicting UK registered designs applied for after that date. Full UK application fees are payable.
EU unregistered design rights continue for existing designs
Unregistered protection for designs is particularly important for smaller businesses and in fast-moving design sectors such as consumer goods and fashion because it arises automatically, without the need to register, so there are no registration fees and less administration costs involved. EU law provides for an unregistered ‘Community’ design right (UCD) that lasts for three years from the date on which the design is first published in the EU. As a result of Brexit, these UCDs are no longer enforceable in the UK in respect of new designs after 31 December 2020, although under transitional provisions UCDs already existing at 31 December 2020 will continue to be enforceable in the UK for the remainder of their three year term.
UK national protection for new designs
To protect new designs going forward, the UK has introduced a new UK unregistered design right, known as the ‘supplementary unregistered design right’ (SUD). Ownership is not limited to UK designers or businesses. The SUD is intended to be equivalent to the UCD but covers the UK only so a right holder owning a UCD EU27 plus the SUD would have equivalent protection right across the old EU28. Unfortunately, however, the disclosure requirements in relation to the EU and UK rights mean that it may be difficult for a designer or business to own both. This is because the EU takes the view that in order for the UCD to be valid, first disclosure of the design must take place in the EU whereas the UK takes the view that in order for the SUD to be valid first disclosure must take place in the UK. This means that a disclosure of the design in the EU will destroy the ability to obtain a valid UK SUD and vice versa. Various suggestions have been made for dealing with this, for example simultaneous disclosure, but the legal position remains unclear. Where practical, registered design protection is recommended for important designs.
Advantages of registered designs
UK registered design protection is an inexpensive way of indicating to potential infringers that you are willing to defend your design. There is no lengthy examination process and the registration can be renewed up to a maximum of 25 years. Having a registration makes it easy to evidence your title, and as it is a ‘monopoly’ right, you do not need to prove that the infringer has actually copied your design – which can be a lengthy and uncertain process. An important point for product designers is also that you have a twelve-month ‘grace period’ in which to apply for the design following first disclosure allowing you to wait and see which designs are successful before deciding which to register.
Endnote … other rights may apply
Since 1988 the UK has also provided unregistered design right protection of up to 15 years for 3D designs for which many product designs will qualify. This has always been independent of the EU system and additional to it. The protection it gives is more limited than the UCD/SUD in that it only protects shape, not surface decoration, whereas the UCD/SUD protects both. On the other hand the UK design right covers a broader range of functional designs. Following Brexit, this UK unregistered design right will only be available to UK designers and businesses (and to those of a limited list of other qualifying countries) or where first marketing occurred in the UK (or in such a qualifying country).
Finally, designers will wish to be aware that copyright protection may apply. Recent developments in EU and UK case law have suggested that copyright may in future become more available to protect industrial designs than has been the case in the past, so this is an area to watch.
Tom Lingard