IP Insight: Brexit and IP, Part 2, Design Rights

BREXIT AND IP: WHAT YOU NEED TO KNOW

This series of blogs by Virtuoso Legal, the IP specialists cover key changes to the status quo and priorities for businesses operating (or planning to) in Europe.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

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By James Gilmer and Liz Ward​

Introduction

What is the current position? 

For the most part, the IP laws are harmonized in Europe.

The UK's IP laws consist largely of transposed EU law from EU Directives and EU Regulations.

However, as the UK has now left the EU as of 1st of January 2021, with a trade deal, what does this mean for Intellectual Property rights holders?

Part 2 of our information and analysis concerns EU Design Rights (both registered and unregistered).

Part 2: Design Rights

Key changes that lawyers and businesses need to be aware of are as follows.

In Europe design rights come in two forms: Registered EU Community Design rights (RCDR) and Unregistered Community Design rights (UCDR). Similarly, in the UK we have UK Registered Design rights (UKRDRs) in the UK Unregistered Design Right (UKUDR). For more information about that, click here. 

International Designs Right Registrations under the Hague Agreement (designating the EU)

• If the International Design Registration, designating the EU, is a protected registration on the WIPO Global design database before 31 December 2020, the UKIPO will automatically create an International re-registered Design, which will be recorded on the UK Design register (at no cost).
• International design registrations protected in the EU under the Hague Agreement will not affect the UK after 1 January 2021.
• The re-registered international UK rights will be identical to the re-registered designs being created from registered community designs (RCDR).
• They will be independent UK rights, and so may be challenged, assigned, licensed, or renewed separately from the original international (EU) design.

Pending International Designs Right Registrations under the Hague Agreement (designating the EU)

• If the international Design right application (IR) (designating the EU) is still pending by 1st January 2021 the UKIPO will not produce an International re-registered UK Design right.
• Instead, an IR(EU) Design right applicant will have 9 months from 1 January 2021 (ending on 30 September 2021) to file for a separate International re-registered UK Design right. This International re-registered UK Design right will then have the same filing date/ priority date of the IR(EU).
• Please note the This International re-registered UK Design application will have to undergo an examination at the UKIPO and the application will be subject to the normal UKIPO application costs, please review these here.

Registered EU Community Design Rights

• An RCDR which is on the register will be automatically cloned onto the UK design registry as a re-registered UK Design right, (at no cost).

• The date of application, date of registration and any applicable priority date will be the same as the original RCDR, as will the date for assessment of whether the design is new and has individual character.

Pending EU Community Design Rights

• RCDR application pending, will not automatically be turned into re-registered UK design rights. Instead, RCDR applicants will have 9 months up to 30 September 2021 to apply to re-register for the UK registered design right with the same filing date/ priority date of the RCDR.
• Please note the UKTM application will have to undergo an examination at the UKIPO and the UKTM application will be subject to the normal UKIPO application costs.

EU Community Design rights Renewals

• If an RCDR renewal date falls before 31 December 2020 and is paid on time, unlike the above position with Trade Marks, there will be a separate renewal fee which will apply for each re-registered UK design.

• If an RCDR renewal date falls 6 months after 31 December 2020 (31 June 2021) there will be no separate renewal fee which for the corresponding re-registered UK design.

• The re-registered UK design will retain the existing renewal date of the RCDR.

Expired EU Community Design Rights

• A comparable re-registered UK Design will be created with an ‘expired status’ if it has expired six months before 1 January 2021 (1 July 2020).

• If an RCDR has expired 6 months before 1 January 2021 (1 July 2020) and the expired RCDR has not been renewed yet a re-registered UK design will automatically.

• RCDRs which expire 6 months before 1 January 2021 will hold an expired status. However, their continued effect will be contingent on the RCDR holder renewing that mark through the EUIPO.

• The expired RCDR will be renewed if the late renewal is paid for at the EUIPO. If it is not the re-registered UK design will be removed from the UK register.

• If the RCDR is renewed within the additional 6-month grace period after 6 months of expiry, the comparable UK Design registration will also be renewed. In these circumstances, the holder of the RCDR will not have to renew the comparable UK Design separately, until the next 5-year renewal date.

New Registration numbers

• To differentiate the new re-registered UK Designs from current already registered UK Design right registrations, the new re-registered UK Design will be made up of the full RCDR number – prefixed with the digit ‘9’ e.g.:
  • RCDR number - 03061225-0001 (Coca-Cola Bottle)
  • Re-registered UK Design right- 903061225-0001
• To differentiate the new re-registered UK Designs from current already registered International Design right registration (IR) designating the EU, the new re-registered UK design will be made up of the IR (EU) number – prefixed with the digit ‘8’ e.g.:
  • IR(EU) designation- 03061225-0001 (Coca-Cola Bottle)
  • Re-registered UK Design right- 803061225-0001
• Please note, a new physical certificate will not be issued, the recorded change will be made online only.

Opting out of cloned rights

• RCDR owners will be able to opt-out of re-registered UK Design right, for the same reasons set out above in respect of Trade Marks.

Unregistered Designs

• Unregistered Design rights are a useful right for those who can’t afford the cost of registering a Design and those products which have a limited commercial shelf life, being a popular asset to those in the fashion industry.
• The UK Unregistered Design Right (UKUDR) right currently affords a different scope of protection from the Unregistered Community Design Right (UCDR).
• UCDR protects the appearance of the whole or a part of a product (2D & 3D designs) for 3 years. The validity requirements for UCDR are that the design is novel and have individual character over prior designs.
• UKUDR has a more limited scope of protection, protecting the shape/configuration, however not surface decoration (only 3D designs) but for a longer period of for 10 or 15 years. For a valid UKUDR, the design must be original (i.e. not copied) and not commonplace.
• Some designs that would be protected by UCDR protection would not meet the requirements to benefit from UKUDR protection. Therefore, on 1^st January 2020, there would be many new designs which would previously have benefitted from UCDR protection could be left unprotected.
• To fix this issue, the UK is creating two new design rights:
• The Continuing Unregistered Design Right (CUDR) will continue to provide the scope of protection of the UCDR for the time remaining of the 3 years of the UCDR in the UK.
• The Supplementary Unregistered Design (SUD) will mirror the UCDR by protecting for a 3-year term from the date of first disclosure in the UK after on or after 1 January 2021.

CONCLUSION

Brexit will impact IP in a number of ways. However, having a clear understanding of how it will impact your business and what to do about it ahead of time is key to success.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

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Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court.

In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique.

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