By Design: Design Rights and Brexit

By Sanjeet Plaha, Senior Solicitor and Kathryn Leake, Solicitor

As of the end of the Brexit transition period (currently 31 December 2020), EU-wide IP rights will no longer apply in the UK. Here, we explore how the upcoming changes in law will affect your registered and unregistered design rights.

Registered designs

At the end of the Brexit transition, Registered Community Designs (RCDs) will no longer be in force in the UK. All RCDs registered at that date will be cloned into equivalent UK registered designs with the same priority dates as the original RCD. This means that owners will maintain full protection for their registered designs across the remaining 27 EU Member States and the United Kingdom. However, importantly, UK cloned designs will have to be maintained and renewed separately to the original RCDs.

Any RCD applications pending at the end of the Brexit transition will not be cloned automatically but can be re-filed in the UK with the same priority date as the equivalent RCD, within 9 months of Brexit day.

Unregistered designs

The rules regarding unregistered rights are (like the rights themselves) a little more complicated.

At the moment, any new designs created by UK citizens/companies may qualify for both Unregistered Community Design Right (UCDR), a EU-wide design right, and UK Unregistered Design Right (UKUDR).

UCDR protects two-dimensional and three-dimensional features of the appearance of products or parts of such products and lasts three years from first publication, while UKUDR protects three-dimensional features of the design of a product (excluding surface decoration) and lasts up to 10 years from first marketing.

Following the end of the Brexit transition period, UCDRs will cease to apply in the UK. All UCDRs in force at the end of the transition will continue to apply in the remaining EU member states, and the UK will grant separate Continuing Unregistered Design rights offering equivalent protection to these pre-existing UCDRs in the UK only, to ensure owners do not suddenly lose valuable design protection. All Continuing Unregistered Designs will subsist until the expiry date of the UCDR on which they are based (three years from first marketing).

The UK government will also create a new unregistered design right in the UK for any new designs disclosed from 1 January 2021, known as the Supplementary Unregistered Design (SUD). The SUD will exist alongside the UKUDR and will offer equivalent protection to the UCDR for the UK only.

First disclosure of unregistered designs

It is important to note that after the transition period, businesses will only be granted unregistered design protection in the territory of first disclosure – either the UK (in the form of the SUD and/or UKUDR) or the EU (in the form of the UCDR). Designs first disclosed in the EU will no longer qualify for UKUDR, and likewise first disclosure in the UK will no longer generate UCDR.

As a result, businesses will need to make an informed choice as to where they first disclose their designs, and, if necessary, may need to consider obtaining registered design protection in the territory (whether it be the EU or UK) where first disclosure did not take place and consequently no unregistered rights were created, in order to ensure they still hold design rights across all key territories.