Although uncertainty lingers around how, when, and even, if, the United Kingdom ("UK") might leave the European Union ("EU"), draft statutory instruments are beginning to emerge which provide a more concrete insight into the intellectual property landscape should Brexit happen.
This note provides an update on our previous article 'Brexit and…designs' following the publication of 'The Designs and International Trade Marks (Amendment Etc.) (EU Exit) Regulations 2019' (the "Exit Regulations"), which sets out the principles under which designs will be protected following Brexit.
Overall, the Exit Regulations uphold the aims set out by the Government in the draft Withdrawal Agreement and No Deal Guidance in that:
- the majority of rights currently enjoyed by holders of RCDs and IRD(EU)s will continue to receive the same protection and benefits as they do currently;
- there will be minimal administrative and financial burden placed on rights holders; and
- continuity of rights, recognition of earlier rights and ensuring the functionality of existing agreements and arrangements are the key focus of the provisions.
Registered Community Designs
Grant and opt out
The Exit Regulations confirm that holders of Registered Community Designs ("RCDs") will on exit day be granted, automatically and free of charge, an independent "re-registered design" ("RRD"), which will be placed on the relevant UK register as soon as practicable.
Rights holders may opt out of the registration of a RRD. In these circumstances, the RRD will be treated as if it had never been registered, under UK law. The opt out is available to exercise at any time on or after exit day, except where on or after exit day the RRD:
- has been the subject of an assignment, licence, security or other agreement
- is the subject of proceedings initiated by the proprietor or with the consent of the proprietor.
Owners that have deferred publication of their RCDs will have nine months from exit day to apply to register the same design in the UK. No formal re-examination of the design by the UK Intellectual Property Office ("UKIPO") will take place and the date for establishing whether the design is new or has individual character will be the same date as for the RCD.
Licences and continuity of rights
Subject to any agreement to the contrary, existing licences that relate to RCDs will continue to apply to the comparable UK right that is created.
References to a RCD in documents produced prior to exit day, shall be read as references to the RRD, unless that document was not intended to have effect in the UK.
Any consents given regarding the RCD before exit day to an act in the UK which would infringe the RRD, shall be considered as a consent to do such act (subject to any agreement to the contrary).
Owners of RRDs, whose renewal date under the equivalent RCD falls within six months from exit day, will be given six months from the date they receive a renewal notice from the UKIPO to renew their RRDs even if this means that they are technically late for the renewal. No late renewal fee will be charged where the renewal is made within six months of the notice being received (rather than within six months of exit day).
If the renewal date of a RCD falls before exit day but the late renewal period expires after exit day, an RRD will be created in the UK and any late renewal fee paid to the European Union Intellectual Property Office ("EUIPO") will mean that no further action is taken by the UKIPO. However, if the late renewal fee is not paid, or the right is not renewed at the EUIPO, the RRD will be removed from the UK Register and will be deemed to have never been registered as a UK-protected right.
Pending RCD applications
Any applicant with a pending application before the EUIPO on exit day will need to file a new application before the UKIPO for a UK registered design within nine months from exit day if it wants to be able to retain the application date of the RCD.
In addition, any applications for an RCD which are refused before exit day but then restored by the EUIPO post exit day may be registered in the UK by application to the UKIPO within nine months from restoration.
International registrations designating the EU
In parallel with RCDs, any international registrations designating the EU ("IRD(EU)") will be automatically re-registered in the UK as a fully independent UK design right but with the option to notify the Registrar to opt-out of such registration at any time on or after exit day, subject to the same opt-out conditions as RCDs.
Renewals for IRD(EU)s also work the same as RCDs: any IRD(EU)s requiring renewal within the first six months post exit day will have six months from notice from the UKIPO to renew without being charged a late renewal fee, if such deadline is more than six months from the date of expiry of the IRD(EU). Any late renewal fees paid by owners of IRDs to the World Intellectual Property Office ("WIPO") in respect of any equivalent international registration with a late renewal period expiring after exit day will not be required to make any further payment to the UKIPO.
Pending IRD(EU) applications
Pending international design applications and deferred international registrations will have nine months from exit day to file an application in the UK and take advantage of the earlier filing or priority date of the international application. As with RCDs, designs can only be deferred in the UK for a maximum of 12 months from registration (not exceeding the 30 months allowed by WIPO). However, unlike an RCD, a deferred IRD(EU) will be subject to examination by the UKIPO to ensure it complies with UK law.
Unregistered Community Designs
Any holders of an unregistered Community (European wide) design right ("UCD") on exit day will continue to benefit from protection in the UK through the newly created 'continuing unregistered community design' ("CUCD"). Any pending proceedings before a UK court will continue as if the UK were still a Member State and the court may grant an injunction to prohibit unauthorised use of the CUCD. In addition, injunctions prohibiting acts in the UK in relation to the UCD will continue to have effect through the CUCD, subject to any order of the Court to the contrary.
Following the UK's exit, a new right will be introduced into UK law which will mirror a UCD – a 'supplementary unregistered design right' ("SUDR"). This new right will be identical in the scope and duration of the current UCD.
A new design will not be protected by this new SUDR if it was made available to the public before exit day. Disclosure is defined as including 'within the European Union' if before exit day and 'within the UK, a qualifying country or a qualifying territory' post exit day. The terms 'qualifying territory' and 'qualifying country' are described as those 'which are designated in Regulations made by the Secretary of State', but no clearer definition is given.
Jurisdiction over disputes in relation to infringement of the new SUDR is described as the 'design court'. This is defined as:
- In England and Wales, the High Court
- In Scotland, the sheriff court and the Court of Session
- In Northern Ireland, the county court and the High Court.
The design court has exclusive jurisdiction:
- For infringement actions and actions in respect of threatened infringement of a SUDR.
- For actions for declaration of non-infringement of a SUDR.
- For actions for a declaration of invalidity of a SUDR.
- For counterclaims for a declaration of invalidity of a SUDR in connection with actions under (1).
The grounds for invalidity of a SUDR are the same as those currently listed for a UCD. However, the grounds relate instead to UK law and/or a qualifying country or qualifying territory, rather than the EU.
In addition, the issue of exhaustion in relation to SUDRs is dealt with in the Design Regulations 1999 and continues to be assessed in relation to an area which includes the UK.
Jurisdictional arrangements (RCDs and UCDs)
The Exit Regulations will not affect ongoing cases before UK courts so far as they relate to the UK with remedies and actions taken or granted by such a court only being applicable to the RRD or the CUCD.
Ongoing court proceedings in relation to an IRD shall continue to apply as if the UK were a member of the EU from exit day. However, the Court will only be able to grant relief or make an order in relation to the comparable domestic right derived from the original international right.