Disclose it by Design, not by Accident

Disclose it by Design, not by Accident

Unregistered Design Rights in the post-Brexit UK

  • New unregistered design rights will be created in the UK after the end of the Transition Period.  Find out in this article about the new continuing and supplementary unregistered design rights, which will prevent right holders from losing term or scope in the protection they receive in the post-Brexit UK, once Community unregistered designs will no longer be enforceable.

  • The UK and the EU will operate in a regime on non-reciprocity as regards the creation of new unregistered design rights.  Existing UK unregistered design rights will continue essentially undisturbed by Brexit; however, the ‘qualification’ criteria are changing.  Find out in this article about the likely implications for UK and EU individuals and businesses.  

  • So that they do not miss out on protection that would otherwise be available, designers and their employers will need to revise their disclosure strategies (including marketing).  E-commerce could be a useful tool, but - as often is the case with Intellectual Property - ‘the devil is in the detail’.  
     

Introduction

I recently wrote about a referral back in 2019 from a UK court to the Court of Justice of the European Union (CJEU) seeking to clarify if disclosure of a design outside the EU may impact the protection conferred to the design in the EU by means of unregistered Community design rights (UCDRs).  At that time, the EU was the “EU-28”, which included the UK.  Please find that article linked here
 
With the Brexit Transition Period (TP) soon coming to an end (it ends at 11pm, on 31 December 2020), the UK leaves the EU and is no longer bound by European law.  Accordingly, designers will need to pay even more attention as to where they choose to disclose their designs if they want to ensure that valid unregistered design right protection will be in place both under European and UK laws.  However, this may not be an easy task.  In this follow-up article, I give an overview of the new UK unregistered design right regime which will be in place in the UK after Brexit and offer some high-level guidance on how to edge the risks.
 

New UK unregistered design rights

On 1 January 2021 (after the end of the TP), UCDRs will no longer be valid in the UK and will be immediately and automatically replaced by new UK unregistered design rights.  If you own an existing right, you do not need to do anything at this stage.  This is because designs that are protected in the UK by means of UCDRs before 1 January 2021 will be immediately and automatically protected in the UK by new UK continuing unregistered design rights (UKCUDRs) as of the new year.  These new rights will continue to be valid in the UK for the remainder of the three-year term provided for under the European laws that established these rights.  It is worth noting that the fact that corresponding UCDRs might have established before the end of the TP through first disclosure in the “EU-27”, i.e. outside of the UK, will not impair the validity of the new UKCUDRs.
 
The UK will in addition introduce new UK unregistered design rights called supplementary unregistered design rights (UKSUDRs).  These new rights will ensure that the UK will continue to provide protection equivalent to protection provided in the UK before the end of the TP under UCDRs, on or after 1 January 2021.  The terms of UKSUDRs will be very similar to those of UCDRs, as UKSUDRs will be established in the UK specifically to avoid that right holders miss out on EU-style unregistered design protection which they would have received under European law, had the UK not left the EU.  However, UKSUDRs will not extend to the “EU-27”.  Importantly, UKSUDRs will provide in the UK unregistered design protection for both two and three-dimensional designs (just like is the case under UCDRs) for a period of three years.  
 
            Where to first disclose?
 
UKSUDRs will be established by first disclosure in the UK.  First disclosure in the EU will not establish UKSUDRs.  However, first disclosure in the EU (or further afield) may destroy the novelty of the disclosed design for the purpose of establishing protection in the UK under UKSUDRs - just like first disclosure outside of the EU is likely to destroy the novelty of the disclosed design for the purpose of protection in the EU under UCDRs, as I have commented in my previous article. 
 
Similarly, first disclosure in the UK may not establish UCDRs and could destroy the novelty of the disclosed design for the purpose of protection in the EU under UCDRs. 
 
The EU-27 and the UK will adopt a regime of non-reciprocity in connection with the requirement of first disclosure for the purpose of establishing unregistered design rights.  Therefore, potential right holders will need to carefully consider where they first disclose their designs if they wish to establish unregistered protection both in the UK and the EU-27.
 

Changes to existing UK unregistered design rights

Existing UK unregistered design rights (UKUDRs) will continue after the end of the TP and will be in place in addition to the new UK continuing and supplementary unregistered design rights described above.  Existing UKUDRs will continue to provide 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 a corresponding article was first made.  However, the qualifying criteria for existing UKUDRs are changing after the end of the TP: 
 
Until the end of the TP, existing UKUDRs can be established by an individual who is resident in the EU-28 or by a business formed under the laws of an EU-28 member state, where first disclosure of the design occurs in an EU-28 member state.  This means that activity anywhere in the EU-28, including the UK, can be sufficient for establishing UKUDRs.  However, from the end of the TP, qualifications for UKUDRs will be limited to individuals resident in the UK or a qualifying country (as defined in The Design Right (Reciprocal Protection) (No. 2) Order 1989), or to businesses formed under the laws of the UK or a qualifying country.  Where qualification is a result of first marketing, these individuals or businesses will need to have first marketed their design in the UK or a qualifying country.
 

Conclusion

Brexit has many implications for designers that rely on unregistered design protection.  First and foremost, designers will need to carefully consider where they first disclose their new designs.  Further, they will need to carefully consider whether they now ‘qualify’ for UKUDR protection. 
 
From a practical point of view, designers may take the practical approach of arranging for simultaneously disclosing their designs in the UK and in the EU to avail of the argument that the designs were first released in the UK as well as in the EU.  This strategy may look appealing, particularly in this era of globalised e-commerce when it is relatively easy to advertise and market products worldwide on the internet.  However, there is currently a general lack of clarity as to whether internet disclosures may fulfil the relevant legal requirements, so watch this space for legal developments. 
 
Alternatively, designers may wish to rely more frequently (if budgets allow this) on registered designs, which provide more certain (monopoly-type) protection, similar in principle to that conferred by patents. 
 
If you would like to know more, please contact Marco or another member of the Kilburn & Strode patents team

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