The UK withdrew from the EU (Brexit) on 31 January 2020 and is now in a transition period that is currently expected to expire at 23:00 (UK time) on 31 December 2020 (“exit day”). Up until the end of the transition period, Registered Community Designs (RCDs) and the Unregistered Community Design right will remain in force in the UK.
The Withdrawal Agreement and other UK Regulations (which provide for proposed changes to relevant UK legislation) set out how EU design rights will become comparable UK national design rights on exit day. Barring any changes that may be introduced if a Free Trade Agreement (“FTA”) is negotiated between the UK & EU before exit day (considered unlikely), the main provisions are:
The same provisions are made for International Design Registrations (under the Hague Agreement) which designate the EU and where, immediately before exit day, the EUIPO has confirmed protection of the design to WIPO. They will be known as "Re-registered International Designs".
It will be possible for owners of an RCD to opt-out from the re-registration of their design in the UK by filing a notice to this effect at any time on or after exit day.
A Community Design Application which has been given a filing date by the EUIPO, but which is not granted or refused by the EUIPO immediately before exit day, will need to be refiled at the UKIPO as a UK Design Application within a period of 9 months beginning with the day after exit day. The new UK application will retain the filing date (and any applicable priority date) of the Community Design Application. Again similar provisions are made for pending International Design Registrations which designate the EU.
At this stage, the UK IPO has not provided any information on the application process for a new UK Design Application that stems from a pending Community Design Application, though it could be as simple as indicating the relevant pending Community Design Application at the time of filing.
It will also be necessary to refile in the UK where there is an existing RCD whose publication has been deferred under the EU Designs Regulation (it is possible to defer for up to 30 months from the filing date). The transitional period in which it will be necessary to reapply will be the same nine month period as for pending applications. Similar provisions are also made for International Design Registrations which designate the EU and which are subject to deferred publication.
Again, the UKIPO has not provided any information on the application process for registered RCDs with deferred publication. However it is clear that UK law will apply in terms of how long the publication can be deferred. This will be 12 months from the filing date of the new UK Registered Design Application. As this is shorter than the 30 months allowed by the EUIPO, it may be necessary to delay refiling in the UK until near the end of the 9 month transitional period, if it is important to maximise the period by which publication of the new UK case is deferred.
The new regulations provide that Unregistered Community Design Rights (“UCD”) that subsist on exit day will continue to have effect in the UK as "continuing unregistered community designs". They also provide for a new "Supplementary Unregistered Design Right" (“SUD”), which will be identical to the UCD, save that it will relate to the UK only, and will arise only in the event of first disclosure in certain qualifying countries: the UK, Hong Kong, New Zealand and UK dependent territories. This differs from the UCD, which arises only where the design is first made available to the public (i.e. is disclosed) within the Community (EU).
There has been some uncertainty in UK circles as to the interpretation of what “first made available to the public in the Community” actually means, and which is key to establishing whether the UCD right (or in due course its mirror SUD right) will arise or not. The prevailing European view, including of the EU IPO, is that there needs to be a first disclosure in the geographical territory of the EU to give rise to the UCD. An alternative view is that a disclosure anywhere will suffice, provided that in the normal course of business the disclosure could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union. The question has been referred by the English Courts to the Court of Justice of the European Union (CJEU) for a preliminary ruling in Beverly Hills Teddy Bear Company vs PMS International Group plc  EWHC 2419 (IPEC), though it is not clear if the CJEU will adjudicate on this before the end of the transition period (or at all).
In its FTA negotiations with the EU, the UK government has been pushing for an agreed interpretation that disclosure in either the EU or UK will give rise to both the EU or UK version of the right, and/or that disclosure anywhere will suffice, if the design has become known in the economic circles in the UK or EU as a result. In October 2020 it became known that the UK government’s desired interpretation is to be rejected by the EU, who will continue to favour the prevailing European view that only a physical disclosure in the geographical territory of the EU will give rise to the UCD. The UK government has indicated they will follow suit; only first disclosure in the physical territory of the UK, Hong Kong, New Zealand or the UK dependent territories will therefore give rise to SUD.
This outcome presents a practical problem for those who regularly rely on these short lived rights to protect their new designs, such as those in the fashion industry. If a designer chooses to first disclose in the UK (for example, at London Fashion Week), they will not get the wider protection of a UCD, though the UK disclosure could still invalidate a later filed Registered Community Design, unless it is filed within the grace period of one year from the first disclosure. The converse applies to those who first disclose in the EU, for example at Paris Fashion Week. A possible solution to this conundrum could be to arrange simultaneous disclosure events in the UK and EU, though it will be some time before this in tested in court. Until such a practice has become the industry norm and has been tested in court (or the CJEU settle the question in a preliminary ruling in favour of the alternative view set out above), the safest option will be to register designs in the territory in which there is no first disclosure, so as to ensure the design has some protection in that jurisdiction going forward. Rights owners will need to be vigilant to ensure applications to register their designs are filed during the one year grace period from first disclosure, or risk a loss of all rights in that territory through a loss of novelty in that design as a result of the disclosure in the “other” territory.
Planned changes to UK legislation also include a significant change to the separate UK Unregistered Design Right, which lasts for 10 years from first marketing and protects the shape of an article (but not surface decoration). Qualification for this right is by reference to the qualifying country of the designer or their employer, or the country of first marketing if done by a qualifying person. At present the qualifying countries are all EEA states, plus Hong Kong, New Zealand and UK dependent territories. Qualifying persons are designers (or their employers) who are citizens of (or incorporated in) or who are resident in (or have a substantial place of business in) these states. On exit day, the qualifying countries will narrow to the UK, Hong Kong, New Zealand and UK dependent territories; designers and their employers in the EEA will no longer qualify.
As we move through the second half of 2020, dual filing in the EU and UK will be increasingly attractive, particularly for those who wish to defer publication, as this will avoid the need to refile in the UK after exit day. Those with RCDs that are the subject of deferred publication may also want to consider bringing forward publication in the Community Designs Bulletin prior to exit day, for the same reason. If applications for RCDs are planned in 2020 (such as those that claim priority from first filings elsewhere), consideration should be given to filing these as soon as possible, so as to maximise the chance of registration before the EU IPO before exit day. The same applies to any changes in ownership or other registerable transactions.
After exit day, it will, of course, become a necessity to file design applications in both the EU and UK, if registered protection is required in both jurisdictions. J A Kemp will be able to file in both the UK and the EU through our UK and Paris offices respectively.
Clients with RCDs on our records can rest assured that J A Kemp will add the new Re-registered Designs (and Re-registered International Designs) to our records at no charge. We will notify clients of this in due course. We will also notify clients who have pending Community Design Applications and RCDs with deferred publications on our records on exit day and seek instructions as to whether they wish to refile in the UK within the 9 month period to do so.
Clients who use other EU counsel for their EU Designs at present may wish to use J A Kemp for UK Designs in the run-up to exit day and beyond. We offer a 50% reduction in our UK service charge for filing when a corresponding UK case is parallel filed with an EU application, whether or not J A Kemp filed the EU case.
As noted above, designers who have hitherto relied on Community Unregistered Design rights to protect their new designs in the EU/UK will have to change their practices, or risk having no enforceable design rights in one of the UK or EU. Unless and until simultaneous disclosure becomes the standard and legally tested practice, or the CJEU decide that appropriate disclosure anywhere will suffice, registering the design in the territory where the design is not first disclosed is recommended, though vigilance will be required to ensure design applications are filed within one year from any first disclosure.