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Brexit and Design Registrations

UK's official split from the EU hasn't affected the brand registrations and product designs of our current clients. Some legal changes to design rights have to be observed, now that the Brexit transition period has ended. As we continue to design products compliant to CE/CA standards and to navigate clients through the registration processes, we have gathered information from various online sources to give you a summary of the latest on design rights.

Design Reality will continue to seek official legal counsel on design rights as needed.  We advise everyone to do the same in order to make their own informed decisions.

In the meantime, we can all rest assured that the registration or applications of patents won’t change.

UK design right will also remain the same after 1 January 2021 and will continue to provide protection for the shape and configuration of three dimensional articles. This will last 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 UK design right will change on 1 January 2021.

Qualifications for the UK design right will now be limited to:

  • People resident in the UK or a qualifying country (as defined in The Design Right, which is a form of monopoly right).
  • Businesses formed under the laws of the UK or a qualifying country.
  • To qualify at first marketing, a design will have to be disclosed first in the UK or a qualifying country.

Unregistered Design Right is a universal copy right that covered UK designs under EU law, but from 2021, UK companies will no longer be able to claim unregistered design rights outside the UK. For UK companies designing products for export, the way forward is to start registering all new designs, rather than to rely on unregistered rights. In addition, the new UK law will stipulate a new unregistered design right called Supplementary Unregistered Design (SUD). This right will ensure that the full range of design protection provided in the UK before 1 January 2021 will remain available for three years after the end of the transition period. The terms of SUD protection will be similar to that already conferred by Unregistered Community Design (UCD). However, the protection it provides will not extend to the EU.

Important to note here is that SUD will be established by first disclosure in the UK, but not in the EU. If you first disclosed your design in the EU, this may actually destroy the novelty in that design, should you later seek to claim UK unregistered rights. That’s why the DBA advises all members dealing with brands or designs that are covered by European registration to ensure that they work with their clients to protect their products from being copied and registered in the EU under similar trademarks.

Similarly, first disclosure in the UK may not establish UCD and could destroy the novelty in that design, should you later seek to claim EU unregistered rights.

Overall, the new laws will ascertain the viability of UK-based designs and will ensure that UK design firms continue to work with the EU without a hitch. More barriers will be in place for designs entering the UK from the EU. Here are the foreseeable changes around those design registrations, according to John Coldham, UK Head of Design and Brands at the International Law Firm Gowling WLG:

  • UK designs will no longer be covered by Registered Community Design or International (EU) design rights. However, they will be automatically re-registered with new numbers and free of charge.
  • As far as EU-based businesses are concerned, unregistered design protection rights will continue to apply in the UK in 2021, but only if their design is first marketed in the UK. In essence, the same rules will apply to designs originating from the EU and used in the UK, as to those originating from the Americas and Asia.
  • For EU-registered designs applied in the UK, there will be no change to the claim of priority and the registration dates, nor a registration fee. However, at the first registration renewal date after 1 January 2021, the UK IPO fee will be required to preserve the registration rights in the UK.
  • For pending applications for EU-wide design protection registrations, businesses can apply to the UK IPO to register the same design in the UK until 30 September 2021.
  • 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 will still be available post-Brexit.

The effects of the coronavirus pandemic on British business have coincided with post-Brexit preparations. One big positive outcome of this is a renewed focus on our local capabilities for both manufacture and design, especially for medical devices, PPE and other healthcare items. The UK Government has made an official appeal to businesses and has allocated grants in support of Made-in-Britain designs and manufactured goods. Design Reality’s mission to bring better products to people means not only a step-by-step, legally competent approach to innovation, but also resilience during transitions. It means supporting our clients always, regardless of their home base, their altered design rights or new product testing needs.

To find out more about our industry experience, our ISO certifications or to speak to one of our international team, get in touch.

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Amy Todd