Is your design protection strategy ready for Brexit?

On 1 January 2021 the transition period ends and the United Kingdom leaves the European Union single market – but what does this mean for the protection of your designs?

Before we look at the changes to design rights arising from Brexit, we briefly outline what UK and EU design protection currently covers. As the name suggests, design rights protect designs - essentially, aspects of the shape and appearance of articles. This can range from relatively simple everyday products to more complex and artistic designs and may be in 2D or 3D forms. There are some variations as regards the scope of protection which dictate which design rights (registered or unregistered) may be available.

How are my designs currently protected?
For many years, UK businesses have been able to protect their designs by an array of UK and EU registered and unregistered rights:
  • UK unregistered design right ('UK UDR') protects the shape and configuration of three dimensional designs. This right arises automatically and provides protection from unauthorised copying in the UK. It lasts for ten years, from the end of the year in which articles made to the design were first marketed, or for fifteen years from the end of the year in which the design was first recorded (such as in a drawing);
  • Unregistered community design right ('UCD') is an EU-wide right protecting designs which are first disclosed within the territory of the EU. UCD protects the appearance of whole or part of a product and includes 2D surface decoration. Again, this is an automatic right and provides protection from unauthorised copying. It lasts for three years from the date it was first disclosed;
  • UK registered designs ('UK RD') protects the same designs as UCD but the registered right confers protection for period of up to twenty five years;
  • Registered community designs ('RCD') is an EU-wide right protecting designs which are first disclosed within the territory of the EU. RCD protects the same designs as UCD and, like UK RD, confers protection for up to twenty five years;
  • Copyright protects purely artistic aspects of a product (such as surface decoration) and 'works of artistic craftsmanship' but there is EU case law which suggests that copyright protection should extend in scope to provide some wider protection of designs. The position as to scope of protection is currently very uncertain. There are also various 'qualification' requirements. Where it applies, copyright arises automatically and does not require any registration.

The UK/EU design regime has often been criticised as too complicated and is about to become more so…

What will the position be from 1 January 2021?
The current UK UDR and UK RD system will continue in operation and will be unaffected, as they are both national UK rights. UCDs and RCDs will continue in operation within the EU but will not cover the UK. So what, then, is the position as regards protection in the UK regarding existing UCD and RCDs and what are the options for protecting new designs?
  • Existing designs: UCD rights which are in existence before the end of the transition period will continue in the UK for the remainder of its three year term, as a continuing UCD. For all existing RCDs, the UK Intellectual Property Office will automatically create a 'cloned' identical design registration, having exactly the same scope of protection, in the UK.
  • New designs: UCD will continue to provide EU wide unregistered design protection (excluding the UK). A new UK unregistered design right called Supplemental Unregistered Design or 'UK SUD' will be created which will mirror the existing UCD regime, providing the same protection for the same three year period but limited to the UK only. This right will arise automatically for designs which are first disclosed in the UK (or in certain specific other countries in which reciprocal protection is in place).

New designs can also be registered in the UK as a UK RD and/or in the EU as a RCD.

Do I need to do anything?
For unregistered design protection, UK businesses potentially face a choice between obtaining UK rights or EU rights:
  • to qualify for UK unregistered protection, the first disclosure of a design must be made within the UK, whereas
  • to qualify for UCD, the first disclosure must be made within the EU (which does not include the UK).

As from 1 January 2021, businesses will only be eligible for unregistered design protection in the territory of first disclosure (UK or EU). Therefore, if your business currently relies on the three year UCD to protect its designs, you will now need to make a choice as to the territory in which your new designs are first disclosed – or take additional steps, noted below.
Where should I disclose my designs?
Practically speaking, the effect of the new designs regime is that if the focus of your business is the EU rather than the UK, any new designs should not be first shown to the UK public (for example at UK trade shows) as this will mean that your design will not qualify for UCD. Conversely, UK businesses who wish to rely on the new UK SUD should take care not to first disclose their design in the EU.
Businesses therefore now need to review launch strategies carefully, as this now determines where design protection automatically arises as regards unregistered design rights.

What about obtaining registered rights?
For registered designs, under both the EU and UK design regimes there has always been a 12 month grace period (from the first disclosure of a design to the public) in which to apply for registered protection. In practice, this grace period allows businesses a 12 month period in which to evaluate the design and see whether it is commercially successful before deciding whether to register it. The 12 month grace period will still apply in both the UK and the EU.
Furthermore, where first disclosure is in the UK, an application for a RCD will still be possible (provided of course it is filed within the grace period of 12 months from the first disclosure in the UK). Likewise, where first disclosure is in the EU, an application for a UK RD will still be possible (again provided it is filed within the grace period following first disclosure in the EU). Therefore, the new regime does not affect the ability to apply for registered rights – though of course two separate applications will need to be made.
Practical take away points to consider
The changes to the unregistered design regime now make the place of first disclosure crucial, as it dictates the unregistered design protection available.
Practical solutions to this issue may include: 
  • Simultaneous disclosure of designs in the UK and EU: simultaneous disclosure at live events in both the UK and EU and live streaming of launch events as between the UK and EU have both been mooted as possible solutions. We will not know for some time whether this approach will work – the Courts will in due course have to decide whether rights acquired in this way are valid.
  • Registering designs
  • Reliance on other intellectual property rights: copyright does not confer the same scope of protection, nor can it be assumed that the design owner qualifies for UK copyright protection, but it may assist in some instances.

How we can help
The changes will narrow the availability of the automatic unregistered design rights in what is already an extremely complicated area of law.
It is important now more than ever for launch strategies to be carefully considered and for investment to be made in them. We can provide you with the support and advice you require to manage the introduction of these changes.

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