Brexit and designs: 9 key things to know

24 November 2020

On 31 December 2020, the Brexit transition period comes to an end, and significant changes to the law in the UK will take effect.



For designs and the law in relation to designs, there are some important soundbites for businesses to be aware of – some of which you may already have heard about, while others may be news outside the UK (even for experienced designs lawyers):

  1. All EU-wide designs existing on 31 December 2020 will automatically be cloned into a UK right that maintains the same term and technical scope of protection as the existing EU-wide right. This applies to (unregistered) Community Design Rights, Registered Community Designs, and international registrations designating the EU. Extracted registered rights will also maintain the application and registration dates of, and the same claim of priority as, its parent existing right.  There will be no fee for the creation of any such UK right. However, for registered rights, at the first renewal date from 1 January 2020, payment of the renewal fee in the UK IPO will be necessary in order to preserve the registration in the UK (as well as any fee in the EUIPO in respect of the remaining EU-wide right).
     
  2. For applications for registered EU-wide design protection that remain pending on 31 December 2020, the owner will have until 30 September 2020 to apply to the UK IPO to register the same design, retaining the earlier filing date of the EU-wide application.
     
  3. The 31 December 2020 transition will not impact the UK's national protection systems for designs (registered and unregistered) created before that date. However, from 1 January 2020, designs disputes in the UK will have potential to involve up to nine different types of protection, with differing qualification criteria and subsistence criteria and differing scopes of protection.

    Like businesses based in the Americas and Asia (except Hong Kong), from 1 January 2020 businesses based in the remaining EU will (only) benefit from unregistered design protection in the UK if they first market their design in the UK. Therefore we recommend that expert professional advice is sought when contemplating strategies for design protection and enforcement in the light of the changes to the systems in the UK and the remaining EU at the end of 2020.

    In particular, with an eye on unregistered design protection that would arise upon first disclosure in the UK or the remaining EU, it may or may not (depending on circumstances and the place of first disclosure) be possible to obtain unregistered design protection in both the UK and the remaining EU.
     
  4. UK legal representatives can continue to represent their clients before the EUIPO (and the Court of Justice) in procedures that remain ongoing on 31 December 2020. However, aside from this, natural persons domiciled outside the EU27 and legal persons without a place of business within the EU must be represented before the EUIPO in accordance with the requirements of EU legislation.
     
  5. In the UK, the address for service rules are changing and changes to the rules on representation are expected to follow. From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK registered design or application. An address for service in the remaining EU or EEA will no longer be permitted. New applications filed in the UK IPO from 1 January 2020 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending on 1 January 2021, and the changes will not apply to comparable re-registered designs (ie those extracted from a Registered Community Design) until 2024.
     
  6. As the UK is a member of the Hague design application system operated by WIPO directly (rather than simply via the EU), this method of application is still available post-Brexit.
     
  7. Proceedings concerning the validity or infringement of an existing EU-wide design that remain pending in the UK courts on 31 December 2020 will become proceedings concerned with the daughter right.
     
  8. As a signatory to the Hague Convention on Choice of Court Agreements, the UK courts will continue to recognise and give effect to exclusive jurisdiction clauses, including those conferring jurisdiction on the courts in the UK in respect of licences of designs beyond the UK.
     
  9. Unless agreement is reached to replace (in respect of the UK) the "Brussels" and "Lugano" regimes on jurisdiction and enforcement of judgments in the EU and the EEA, in the UK the common law will govern such issues. The common law already governs such issues as between the courts in the UK and the courts in the US and Canada. The transition presents some opportunities for well-informed potential litigants.

For in depth commentary on this topic, please explore our article What does Brexit Mean for Intellectual Property? Although necessarily a substantive piece of analysis, the drop-down format enables you to dip into the areas of most interest to you (for example, exhaustion, trademarks, designs, copyright and neighbouring rights, customs arrangements and IP litigation). We also explain the wider legal position, within which intellectual property sits.

For bespoke advice tailored to your business's need, please get in touch.


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