04 Aug 2020

Registered designs

The registered Community design ("RCD") system has allowed applicants to obtain a single design registration covering all European Union ("EU") member states rather than require them to seek national protection through separate intellectual property ("IP") offices. RCDs are multi-jurisdictional and unitary creations whereby the rights and scope of protection are indivisible. Accordingly, the rights under the RCD are tied directly to what constitutes the single market of the EU which underpins the development of the "Fortress Europe" doctrine allowing for the free movement of goods, but as a barrier to goods from outside the EU. The RCD gives broad protection for rights-holders by providing a basis for seeking and being granted EU-wide injunctions against infringers. 

The RCD system has also influenced and led to the harmonisation of national design laws and registration procedures across the EU. This has promoted consistent application and interpretation of national design registrations (as well as RCDs), giving certainty to rights-holders and consumers. 

Arising from the negotiations between the United Kingdom ("UK") Government and European Council, a majority of key principles which will underpin design law going forward have been agreed, and the UK Government has provided certain guidance on how these principles will be fulfilled in practical terms. However, there remain outstanding points where, either, they are still under negotiation between the UK Government and European Council, or the method of their implementation has not been articulated.

Will my RCD still cover the UK?

Following Exit Day[1], RCDs will no longer protect designs in the UK.

Therefore, in order to ensure continued protection for pre-existing RCDs, owners of RCDs registered and published by Exit Day shall become the owners of a comparable registered and enforceable IP right in the UK, without the need for any further application to, or examination by, the UK Intellectual Property Office ("IPO"). 

The 're-registered design' – hereafter "RRD" – will cover the same design, and will have the same filing or priority date, and the same renewal date, as the RCD. The RRD will come into being the day following Exit Day, automatically and free of charge. The RRD will be a fully independent UK right that can be challenged, assigned, licensed or renewed separately from the RCD.

In an effort to minimise administrative burden, the registration number allocated to the RRD will be taken from the relevant RCD prefixed with the number 9. Owners of RRDs will be able to access details about the right on the UK IPO's online database.

Can I renew my RCD early to avoid UK renewal fees?

As the RRD is an independent IP right, a separate renewal fee will apply, payable directly to the UK IPO. Although a RCD can be renewed up to six months before the renewal date, if a RCD renewal date falls after Exit Day, early payment of the renewal fee at EU IPO (i.e. before or on Exit Day) will have no effect in respect of the RRD. A separate renewal fee will be payable to the UK IPO – regardless of whether (or when) a renewal action was taken on the corresponding RCD.

Although usually the UK IPO sends a six-month renewal reminder to UK registered design ("UKRD") owners, as the RRD will have the same renewal date as the corresponding RCD, the UK IPO will be unable to send renewal notices six months ahead of time for any RRD with upcoming expiry dates – as the RRD will simply not exist until the day after Exit Day (which could be less than six months before renewal is due).

  • Where a RRD has a renewal date which falls more than six months after the day following Exit Day, the UK IPO will adopt its usual practice and the owner will be notified around six months before the RRD is due to expire
  • Where a RRD is due to expire within the first six months following Exit Day, the owner will receive a notice from the UK IPO on, or as soon as reasonably practicable after, the expiry of the RRD. The owner will then have six months from the date of the notice to renew the RRD – regardless of the previous renewal date. In recognition of this issue, the UK IPO will not require owners to make additional payment for the late renewal. If the RRD is not renewed, it will be removed from the register (but may be restored at a later date in accordance with existing UK law).

Will my pending RCD application be transferred to the UK register?

The UK Government will not create a RRD in respect of RCD applications still pending at Exit Day. Instead, applicants will have a right to file a design application with the UK IPO for the same design – and to retain the same filing date (and/or claim any earlier priority date) as the pending RCD application – provided the application is filed with the UK IPO within nine months of Exit Day. If the details of the later application do not match the corresponding RCD application, the owner will not be able to claim the earlier filing (or priority) date(s).

Unlike for RRDs, the application will need to be filed directly with the UK IPO, and will be examined by the UK IPO, like a normal UKRD application – incurring usual UK official fees. Given this additional examination, there is no guarantee that the application will be accepted, even if the corresponding RCD application has been or is accepted by the EU IPO.

What happens if I have deferred publication of the RCD?

A RCD which is deferred following Exit Day will be treated as being equivalent to a pending RCD application. As with other pending applications, the owner of a deferred RCD can preserve earlier filing (and priority) date(s) in the UK by filing an equivalent UKRD application within nine months of Exit Day. However, as the deferred RCD has already been examined by the EU IPO, this type of UKRD application would not be the subject of substantive examination by the UK IPO.

If the owner of a deferred RCD wishes to also apply for deferment of the UKRD, there will be different consequences for publication depending on when the RCD and the UKRD are filed, given that the UK IPO only permits deferment of 12 months, whilst deferment of publication at the EU IPO can be up to 30 months.

In short, whichever deferment period is the shortest will determine the publication of the UKRD based on a RCD.

Filing date of RCD

Maximum deferment period

Filing date of UKRD

Publication date

1 November 2018

1 May 2021 (30 months)

1 March 2021

1 May 2021 (based on maximum RCD deferment)

1 November 2019

1 May 2022 (30 months)

1 September 2021

1 May 2022 (based on maximum RCD deferment)

1 November 2020

1 May 2023 (30 months)

1 September 2021

1 September 2022 (based on maximum UKRD deferment)

However, if an application for a UKRD does not seek to retain the earlier filing and priority dates of the corresponding RCD, UK deferment can be requested in the normal manner, which will run for 12 months from the date of the UKRD application – regardless of whether that date falls inside or outside of the nine months following Exit Day.

What if I don't want to be granted a RRD?

If owners of RCDs do not wish to hold the new RRD, they may opt out of being granted the RRD – in which case, it will be treated as if it had never been applied for or registered under UK law. Requests for opt out can only be submitted after Exit Day (as the RRDs do not come into being until such time). The UK Government will make available the notice template to submit such request in due course.

However, given the consequences of opting out, the option will not be available where, after Exit Day, the RRD is or has been:

  • Used in the UK by the owner or with its consent
  • The subject of an assignment, licence, security interest or other agreement
  • The basis or subject of proceedings initiated by the owner or with its consent.

The request will need to be submitted to the UK IPO, along with details of anyone with an interest in the corresponding RCD, as notice must be given to interested third parties for the opt out request to have effect. If the UK IPO determines that the opt out request has been inappropriately exercised, it may take steps to reinstate the RRD.

Unregistered designs

Sitting alongside the system for registered design protection, unregistered protection has been available in the EU through unregistered Community Designs ("UCDs") – a multi-jurisdictional, unitary IP right for parties who disclose or 'make available' their designs. As with RCDs, the EU-wide UCD provides a basis for seeking and being granted EU-wide injunctions against infringers. The UCD system has also provided a short-term, standardised level of protection for product designs without designers having to apply for registration, nor rely on the (inconsistent) patchwork of national protection offered by individual EU member states.

How will the UK protect unregistered designs after Brexit?

Following Exit Day, UCDs will no longer provide protection to designs covering the UK. Therefore, in order to ensure continued protection for designs which would have otherwise been protected by UCDs, the UK Government is making provision for the introduction of two new unregistered IP rights.

  1. Continuing unregistered design (CUD)

Owners of UCDs existing at Exit Day shall become the owner of a comparable enforceable IP right in the UK, known as a 'UK continuing unregistered design', or "CUD". The CUD will cover the same design, and will come into being the day following Exit Day automatically, even if the design the subject of the UCD was first disclosed in the EU, but outside the UK; this will not affect the validity of the CUD.

The CUD will continue to protect the design in the UK for the remainder of the three-year term attached to the corresponding UCD. Therefore, CUD will no longer be in use by the third anniversary of the day following Exit Day.

  1. Supplementary unregistered designs (SUD)

Under new law, the UK Government will also create a form of unregistered protection known as the 'supplementary unregistered design', or "SUD". The SUD will be introduced to ensure that the full range of unregistered design protection available in the UK at Exit Day will remain available after Exit Day.

The terms of SUD protection will mirror the UCD by providing protection for qualifying two and three-dimensional designs but its scope will not extend to the EU.

The current UK Government guidance suggests that, unlike the UCD or CUD, SUD will be established by first disclosure in the UK or another qualifying country, and that first disclosure in the EU will not establish a SUD.

However, the current text of the draft negotiation document[2] (specifically Article 24.28(3)) suggests that first disclosure in the UK or any member state of the EU should qualify a design for protection under both the EU's UCD regime and the UK's SUD regime. If this is accepted by the EU, designers will not need to be as concerned that disclosure in either the UK or the EU could prevent them from securing unregistered design protection in the other territory (by destroying the novelty of the design). 

UK unregistered design right (UKUDR)

In addition to CUD and SUD, the UK will continue to protect designs through UK unregistered design right, or "UKUDR". UKUDR provides unregistered protection for the shape and configuration of three-dimensional articles for up to 15 years from the end of the year in which the design was first recorded, or an article first made to the design.

However, the qualification for protection will be narrowed from the day after Exit Day, to create a consistency with the new SUD. As a result of such changes, qualification will be limited to:

  • People resident in, or businesses formed under the laws of, the UK (or a qualifying country)
  • Where qualification is by first marketing, the design will need to have been disclosed in the UK (or a qualifying country).

What if my question is not answered here?

Please contact any member of our Intellectual Property team if you have any additional questions.

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[1] The day which marks the end of the period of time during which the UK will remain in both the EU customs union and the single market, currently 31 December 2020.

[2] The publicly-available draft negotiating document for a comprehensive free trade agreement between the United Kingdom and the European Union, released by the United Kingdom's negotiating team (as shared with the European Union Task Force for Relations with the United Kingdom).