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.
- 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.
- 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).
- 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).
- 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.