By Design: Differences Between EU and UK Registered Designs – Disclaimers

By Patrick Chapman, Partner

As our readers will probably be aware, although the UK has now officially left the EU, a transition period is in place until (at least) 31 December 2020 which means that EU Registered Designs (and trade marks) continue to cover the UK for the time being. After the transition period ends, EU Registered Designs will no longer cover the UK and so it will be necessary to obtain separate protection in the UK. For many applicants, this will be their first foray into the UK system. Fortunately, the UK and EU Registered Design systems are largely harmonised and so the law and practices will, in the most part, be familiar. Nevertheless, there are some key differences and we will be exploring those in a series of articles over the coming months. In this first instalment we will be taking a look at the practice on disclaimers.

Like the EU, UK Registered Design law allows applicants to use disclaimers to control the scope of protection. In the EU, such disclaimers are included in the visual representations themselves, typically by using broken lines for elements of the design which are not to be protected.

RCD No 30606-0005

In addition to visual disclaimers, UK practice allows applicants to include explanatory text which serves as a written disclaimer. For example, where the design is represented by colour drawings, a written disclaimer may be added stating that “no claim is made to the colour shown in the drawings” or similar. Written disclaimers may also be used to discount other elements of the representations submitted and should be accepted by the UKIPO provided they are clear and understandable.

Written disclaimers can be particularly useful when filing an application at short notice and the desired drawings are not available for filing. In such a situation, a written disclaimer can be used to quickly and simply manipulate the protection offered by the drawings which are available. There is also potential for one set of drawings to be teamed with several different disclaimers in order to generate a suite of designs with varied scope. Of course, it is worth bearing in mind that written disclaimers may not be appropriate in other countries and so suitable drawings which reflect those written disclaimers may be needed when filing outside of the UK. However, this strategy may at least buy you some additional time to prepare or obtain those drawings.

Stay tuned for our next instalment where we will look at another aspect of UK practice.