Brexit & Designs

Design law in the UK helps product designers and developers protect the shape and configuration of articles they create.  Rights in a design may arise automatically, as in the case of “unregistered” designs, or may be obtained after formal application process, as in the case of “registered” designs. These design rights are governed separately by both European and UK law, which act concurrently.
Now that the UK has begun the process of leaving the EU, it is important for designers to consider how best to protect their current and future designs in the UK and the remainder of the EU.

UK designs

There are currently no proposals to change domestic law relating to registered and unregistered designs in the UK, and therefore the acquisition of UK-only protection for new designs and the enforcement of such rights in relation to existing designs will be unaffected. 

Unregistered designs are protected in the UK by “design right” which, subject to certain qualification criteria, subsists automatically.  The extent of protection afforded by design right is limited compared to registered designs in a number of ways. First, the protection is essentially concerned with the shape and configuration of articles and matters such as surface decoration and texture are excluded from protection.  Second, design right provides protection against copying, whereas registered designs are monopoly rights which can be infringed even if the infringing article was independently designed.  The term of design right is also shorter than for registered designs.

UK registered designs are obtained by filing an application with the UK Intellectual Property Office.  The process is quick and inexpensive. Registered design protection can last for up to 25 years.
Furthermore, the UK will remain a member of the Paris Convention, which underpins intellectual property protection around the world. As such, it will remain possible for designers who have filed for registered design protection in the UK to subsequently claim the priority of that application for a design registration in the EU (or elsewhere) and vice versa.

EU designs

The position in relation to the acquisition and enforceability of EU design rights (known as registered and unregistered Community designs) in the UK following Brexit is more complicated.
 
While many questions are yet to be answered, the draft UK/EU Withdrawal Agreement published by the EU in March 2018 is encouraging. The draft Agreement firstly assumes a transition period, during which existing intellectual property rights will be maintained, lasting until 31 December 2020. This means that Community designs (registered and unregistered) will continue to apply in the UK and be recognised and enforced – on an EU-wide basis – by the UK courts. Furthermore, UK attorneys and lawyers will continue to be able to exercise their representation rights before the EU Intellectual Property Office and the Court of Justice of the European Union (CJEU) during the transition period. The UK government appears to be in agreement with this.

At the end of the transition period, the draft agreement envisions no loss of protection for holders of EU intellectual property rights.  The draft Agreement stipulates that the holders of registered Community designs that have been registered before the end of the transition period will automatically be granted a comparable registered design right in the United Kingdom. The date of filing or the date of priority will be the same as that of the registered Community design. The first renewal date of the new UK registered design right will be the same as the renewal date of the corresponding EU design registration, and the term of protection for the new UK right will be as least as long as that of the EU registered design on which it is based.

Again, the UK government appears to be happy with these proposals in principle, though the precise process that will be followed is not yet clear.  It is also unclear whether any official fees will be charged. The legal basis for achieving the continuation of EU intellectual property rights in the UK, at least during the transition period, is the UK’s EU Withdrawal Bill, which is working its way through the UK parliament and which aims to import all EU law in existence immediately before Brexit into domestic UK law.  Registered and unregistered Community designs are established by an EU regulation, which would accordingly become part of UK law.  However, there will be anomalies, such as the qualification criteria (see below) and the basic fact that this regulation provides for EU-wide rights which will be incompatible, following the end of any transition period, with the UK’s future status as a non-EU country.

The EU Withdrawal Bill proposes that the UK government will be able to amend UK law to correct any such legal “gaps”, which may provide a solution.  The UK will no doubt also enact further legislation to give effect to the terms of the EU/UK Withdrawal Agreement and any future agreement governing the future relationship between the EU and the UK.

Registered designs

As mentioned above, the draft EU/UK Withdrawal Agreement envisages that holders of registered Community designs will automatically be granted an equivalent UK registered design right.  However, none of the provisions outlined in the draft EU/UK Withdrawal Agreement will apply in the event of a so called “no-deal” scenario.  Negotiations are likely to go to the wire and, whilst it appears unlikely that they will break down entirely, the completely risk-free approach would be for intellectual property rights holders to plan for such an eventuality.

In light of the uncertainty, it has been reported that UK Registered Design filings increased by 95% in August 2016 compared with August 2015. It therefore appears that many designers are applying for both UK and EU registered designs. For the time being this would appear to be the safest option for designers until future provisions become clearer.  This is even more attractive given that the UKIPO has recently reduced its filing fees for UK registered designs.

For future registered design applications, UK-based applicants will be able to take advantage of The Hague Agreement, the international system for registered design applications which the UK government ratified in March 2018. This will enable applications to be filed covering the full 67 signatories to the Hague Agreement, including both the EU and the UK.

In terms of applying for a registered Community design, the rules of the EU Intellectual Property Office (EUIPO) require that if an applicant does not have their domicile, principal place of business or a real and effective industrial or commercial establishment in the EU, then they require professional representation.  During any transitional period this EU domicile requirement will be deemed to include the UK.  Once that ends, Marks & Clerk’s international network, including offices in France and Luxembourg, ensures that we will continue to be able to represent our clients before the EUIPO without interruption.

Unregistered designs

The most significant differences between UK and EU design law can be found in the field of unregistered design rights. Under the EU designs regulation, rights in unregistered Community designs subsist automatically for up to three years from the date on which the design is first made available within the EU. The scope of this protection is limited to copying but it overs the same design aspects as registered Community designs, including surface decoration. 

The draft EU/UK Withdrawal Agreement envisages, first that existing EU law regarding the subsistence of unregistered Community designs will continue to apply in the UK during the transition period, and second, that by operation of law holders of unregistered Community designs that arose before the end of the transitional period will automatically become the holder of an equivalent intellectual property right in the UK.  This new right will afford the same level of protection, and will last at least as long, as that of the unregistered Community design on which it is based.

Thereafter, if EU design law ceases to apply in the UK in its entirety, the unregistered protection afforded to design owners will be more limited, in particular, it will no longer be possible to obtain unregistered protection for surface decoration.  This could have a big impact in the fashion and furniture sectors. For commercially valuable designs, and in particular for designs which rely upon surface decoration, in order to avoid missing out on protection it would seem that the safest option for designers is to cover their designs with UK registered design applications.

For designers who still wish to benefit from unregistered protection in the EU, it is worth noting that there is some legal discussion over whether a design that is first published  outside of the EU can benefit from unregistered Community design protection.  Designers should therefore consider targeting the initial publication of their designs at EU-based customers and traders, rather than principally targeting the UK. Conversely, it should be noted that unregistered design right in the UK is only available to “qualifying individuals”, the definition of which currently covers all EU residents. It may be the case that UK law is amended to remove the right of EU residents to obtain unregistered design right in the UK.

Until negotiations regarding the UK’s departure from the EU have progressed further, it will not be possible to determine the full extent of Brexit upon design protection in the UK. Given the relatively low cost of applying for registered designs, in the short term designers can put themselves in the most secure position by filing registered design applications in both jurisdictions. Designers wishing to adopt a more “lean” filing strategy may consider applying for EU design protection only, as it would seem unlikely that existing EU design registrations will be denied the possibility of being “split-off” into an additional UK registration, though this possibility cannot be excluded. Finally, given the uncertainties surrounding unregistered design rights in both the UK and the EU, designers may wish to consider applying for registered protection in one or both territories for potentially valuable designs, rather than being reliant on any such automatic unregistered rights.

If you have any questions regarding the impact of Brexit on your intellectual property rights, please contact your usual Marks & Clerk advisor or, alternatively, you can direct your question to the chair of our Brexit committee, Graham Burnett-Hall.

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