Brexit and designs

Registered designs

Since 1 January 2021, the scope of protection afforded by registered Community designs ("RCDs") has not extended to the United Kingdom ("UK"). However, each owner of a RCD that was registered and published before or on 31 December 2020 has been granted a comparable registered and enforceable IP right in the UK, known as the 're-registered design' – hereafter "RRD" – which came into force automatically and free of charge on 1 January 2021.

Where can I find details of my RRD?

Owners of RRDs can access details about the right on the online database of the UK Intellectual Property Office ("UK IPO"). To locate details of the RRD, the registration number allocated to the RRD has been taken from the relevant RCD prefixed with the number 9. In summary, the RRD covers the same design, and has the same filing or priority date, and the same renewal date, as the RCD. 

Can I deal with my RRD separately from my RCD?

The RRD is a fully independent UK right that can be challenged, assigned, licensed or renewed separately from the RCD. However, this means that, upon renewal, a separate fee will be payable directly to the UK IPO. Payment of the renewal fee at the European Union Intellectual Property Office ("EU IPO") has no effect in respect of the RRD.

Was my pending RCD application transferred to the UK register?

RCD applications still pending (or unpublished) on 31 December 2020 have not been transferred to the UK register.

Instead, until 30 September 2021, RCD applicants have a right to file a design application directly 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[1].

Unlike for RRDs, the application will be examined by the UK IPO, like a normal UK registered design ("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 deferred publication of the RCD?

A RCD which remained deferred on 1 January 2021 has been treated as 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 before or on 30 September 2021. 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, because 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.

If an application for a UKRD does not seek to retain the earlier filing and priority dates of the corresponding RCD, deferment of the publication of the UKRD can be requested in the normal manner, which will run for 12 months from the date of the UKRD application.

What if I don't want to own a RRD?

Although the RRDs have been granted automatically, if owners of RCDs do not wish to hold the new RRD, they may opt out from doing so – in which case, it will be treated as if the RRD had never been applied for or registered under UK law.

However, given the consequences of opting out, the option will not be available where, from 1 January 2021, 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; or
• the basis or subject of proceedings initiated by the owner or with its consent.

Requests for opt out can now be submitted to the UK IPO, which must include 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

How does the UK protect unregistered designs after Brexit?

Since 1 January 2021, the scope of protection afforded by European-wide unregistered Community designs ("UCDs") does not extend to the UK. However, the UK Government has introduced two new unregistered design rights.

1. Continuing unregistered design (CUD)

Owners of UCDs existing at 31 December 2020 benefit from a comparable enforceable IP right in the UK, known as a 'UK continuing unregistered design', or "CUD". The CUD covers the same design, and came into force on 1 January 2021 automatically. The CUD subsists even if the design the subject of the UCD was first disclosed in the EU, but outside the UK.

The CUD will continue to protect the design in the UK for the remainder of the three-year term attached to the corresponding UCD and, thus, are a short-term fix intended to prevent owners from losing any protection in the UK during the usual three year period. Therefore, CUDs will no longer exist from 1 January 2024.

2. Supplementary unregistered designs (SUD)

With regard to designs created on or after 1 January 2021, under the new national law, the UK Government has created a form of unregistered design protection known as the 'supplementary unregistered design', or "SUD". The SUD has been introduced to ensure that the full range of unregistered design protection available in the UK at 31 December 2020 remains available thereafter.

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.

Unlike the UCD or CUD, SUD is established by first disclosure in the UK or another qualifying country. First disclosure in the EU does not establish a SUD.

Since 1 January 2021, the UK has become a 'third country'. Going forward, as the design has to be 'novel' and have 'individual character' measured against what previous relevant designs were available to the public, designers will have to choose whether to seek UCD or SUD, which will depend on first disclosure of the design – first disclosure in the UK could rob the design of its novelty with regard to seeking UCD protection, and vice versa. Moreover, the law remains unclear as to whether simultaneous 'first' disclosure of the design (e.g. via the Internet) in the UK and the EU will enable the owner to secure UCD and SUD, or prevent qualification from both forms of protection.

UK unregistered design right (UKUDR)

In addition to CUD and SUD, the UK will continue to protect original, non-commonplace designs through UK unregistered design right, or "UKUDR". UKUDR provides unregistered protection for the shape and configuration of three-dimensional articles[2] 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, since 1 January 2021, the qualification for protection is narrowed 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); or

• where qualification is by first marketing, designs 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.

[1] 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).

[2] Unlike UCD and SUD, UKUDR does not protect surface decoration or two dimensional designs.