The UK withdrew from the EU (Brexit) on 31 January 2020, and the transition period ended on 31 December 2020. The UK is no longer subject to EU law or the jurisdiction of the European Court of Justice. The Withdrawal Agreement and other UK Regulations set out how EU design rights have become comparable UK national design rights on 1 January 2021. The main provisions are:
The same provisions are made for International Design Registrations (under the Hague Agreement) which designate the EU and where, on 1 January 2021, the EUIPO has confirmed protection of the design to WIPO.
A pending Community Design Application or RCD which was subject to deferred publication on 1 January 2021 will need to be refiled at the UKIPO as a UK Design Application, if registered design protection is required in the UK. This must be filed by 30 September 2021, in order to retain the filing date (and any applicable priority date) of the Community Design Application, which could be essential to maintain novelty. Again similar provisions are made for pending International Design Registrations which designate the EU. As the maximum period a UK application can be deferred is less than a Community Design Application (12 months from filing versus 30 months from the priority date), we recommend filing the comparable UK application close to 30 September 2021 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 31 December 2020 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). Both the European Union and UK have confirmed that “first made available to the public” should be interpreted to mean that only an actual physical disclosure in the relevant geographical territory will give rise to the rights.
This 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 is tested in court. Until such a practice has become the industry norm and has been tested in court, 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.
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. Before 1 January 2021 the qualifying countries were 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. Since 1 January 2021, 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.
New Design Applications
It is now a necessity to file design applications in both the EU and UK, if registered protection is required in both jurisdictions. J A Kemp is able to file in both the UK and the EU through our UK and Paris offices respectively.
Those with RCDs pending or subject to deferred publication at the EUIPO must file a new UK Design application at the UKIPO by 30 September 2021. If they do not, the ability to obtain valid registered protection for that design in the UK is likely to be lost.
Clients who use other EU counsel for their EU designs at present may wish to use J A Kemp for UK designs, particularly now that the UKIPO has confirmed that a UK address for service will be required for such applications. 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.
Future Reliance on Unregistered Design Rights
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, 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.