The UK withdrew from the EU (Brexit) on 31 January 2020 and is now in a transition period that is currently expected to expire on 31 December 2020. 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 UK Government has approved draft regulations, The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, that will come into force on ‘exit day’. A link to the text can be found here. ‘Exit day’ will be the day after the end of the transition period. Barring an extension to the transition period, exit day will be 1 January 2021.
The EU Exit Regulations set out in detail how EU design rights will become UK rights under the relevant UK legislation. 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 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 you can defer the publication. 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 priority 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 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", which will be identical to the Unregistered Community Design Right, save that it will relate to the UK only, and will only arise in the event of first disclosure in certain qualifying countries: the UK, Hong Kong, New Zealand and UK dependent territories. This differs from an Unregistered Community Design Right, which only arises where the design is first disclosed in the European Union.
Up until recently the prevailing view, including of the EU IPO, was that a first disclosure that gives rise to Unregistered Community Design Right must take place in the physical territory of the European Union. 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. Which view is correct may in due course be decided by the Court of Justice of the European Union (CJEU), following referral of the question by the English courts in Beverly Hills Teddy Bear Company vs PMS International Group plc  EWHC 2419 (IPEC). The CJEU’s answer to this question is likely to be determinative not just in relation to how Unregistered Community Design Right can arise, but also how the new UK Supplementary Unregistered Design Right can arise. If the prevailing view set out above is followed, designs that are first disclosed in the physical territory of the European Union will not qualify for the new UK Supplementary Unregistered Design Right. Conversely, designs first disclosed in the physical territory of the United Kingdom will not qualify for Unregistered Community Design Right. If the alternative view is followed, one will qualify for both rights if the event of first disclosure could, in the normal course of business, reasonably have become known to the circles specialised in the sector concerned operating in the European Union and in the United Kingdom. The geographical location of the first disclosure will not determine qualification for the rights.
The EU Exit Regulations 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.
Design Applications during the transition period
At least in the first half of 2020, given the speed of registration of an RCD at the EUIPO, clients may not feel that it is absolutely necessary to dual file design applications in the EU and UK, particularly given that there will be a 9 month period to refile in the UK after exit day. It is however advisable where immediate enforcement of design rights is required.
As we move into the second half of 2020, dual filing in the EU and UK will be more attractive particularly for those who wish to defer publication for up to 12 months, 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.
Design Applications After Exit Day
After exit day, it will, of course, become a necessity to file design applications in both the EU and UK, if protection is required in both jurisdictions. J A Kemp will be able to file in both given that we have offices in the UK and in Paris.
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 seek instructions in the unlikely event that clients wish to opt-out from re-registration in the UK. 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 currently 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.
Clients should err on the side of caution and assume that the CJEU will follow prevailing opinion and answer the question referred to it by the English courts (assuming it comes before the Court prior to exit day) by concluding that a physical disclosure in the territory of the European Union is required to give rise to Unregistered Community Design Right.
If the CJEU does decide this way, designers or their employers in the EEA will be unlikely to qualify for any form of Unregistered Design Right in the United Kingdom post-Brexit, assuming first disclosure of their design in the European Union. The converse will apply to designers and their employers in the United Kingdom, unless they choose to disclose their design first in the European Union, in which case they will qualify for UK Unregistered Design Right and Community Unregistered Design Right. Therefore, at least until the CJEU’s decision is known, those that have hitherto relied on Unregistered Design Rights to protect their designs in the European Union (including the United Kingdom) may need to change their protection strategy and file for registration in at least one territory (where the design is not first disclosed). For EEA based designers, this is likely to mean filing in the United Kingdom, while UK based designers will likely need to file for an RCD, unless they choose to first disclose in the European Union.
Please contact your usual J A Kemp adviser if you have any general queries or would like to assess specific implications for your business.