Our consistent advice, which we still consider to be the best course of action, is that in order to protect design in the EU, it remains appropriate to continue filing applications at the EUIPO, and that there is no legal necessity for dual filing in the UK.
Designs are protected with registered and unregistered design rights at both national (UK) level and EU level.
The UK is due to leave the EU on 29 March 2019. A Withdrawal Agreement is under negotiation between the UK and the EU, which would provide for a transition period until 31 December 2020. During this period, the existing IP systems would remain in place.
The UK has already enacted legislation (the EU Withdrawal Act 2018) which provides the basis for how EU law will be converted into national law, and provides that all existing ‘rights’ will be recognised. The UK government has also published explanatory notes regarding what will happen if the Withdrawal Agreement is not in place in time. A draft of the Withdrawal Agreement has also been published and this includes proposed provisions for dealing with IP rights.
UK registered designs
While UK registered designs won’t be directly affected by the UK leaving the EU, changes to existing UK legislation seem inevitable at some point, although we don’t expect this to occur immediately on Breixt. For example, we might expect in due course that the safeguard clause for disclosures that “could not reasonably have become known…in the normal course of business to persons carrying on business in the EEA and specialising in the sector concerned” could be amended to refer only to the UK.
Unregistered design rights (UDRs)
A UK UDR automatically exists when an item is made to a particular design, or by the creation of a ‘design document’ by a ‘qualified person’ from either the EU, or a non-EU country that provides reciprocal protection to UK designers. Again, we expect no immediate change on Brexit, but it is possible that in the future the UK might decide to remove EU nationals and residents from the scope of a UK UDR, on the basis that the EU doesn’t provide equivalent protection.
Unregistered Community Designs (UCDs)
A UCD automatically comes into existence when a design is first made available to the public within the EU, giving its owner the right to prevent any unauthorised copying of that design across the EU. Under the current proposals, new UCDs would no longer cover the UK post-Brexit. The UK government have said that they will introduce an analogous right (to be called the “supplementary Unregistered Design Right”) at Brexit.
The Draft Withdrawal Agreement proposes that existing UCDs will be recognised in the UK post-Brexit, and the UK government have said this will also be the case if no Agreement is in place.
Registered Community Designs (RCDs)
The RCD is an EU unitary right, so it’s expected that new and existing RCDs won’t apply to the UK post-Brexit. Owners of RCDs granted before the Brexit date of 29 March 2019, or the end of the transition period on 31 December 2020, will become the owner of a comparable registered and enforceable design registrations in the UK without the need for re-examination.
Whether a Withdrawal Agreement is in place or not, applications for RCDs which have not been registered are expected to need to be refiled in the UK within a 9 month period. Such new applications would retain the filing date and priority dates of the original application. However, given the short pendency of RCD applications, we think it should be possible to avoid the need for reregistration.
We are still waiting to hear how on-going proceedings, such as invalidation and revocation actions will be treated under the two possible scenarios. We will update you once there is further information about this.
Since the scope of a post-Brexit RCD wouldn’t include the UK, enforcement brought in an EU court would not be effective in the UK. So separate actions would be needed if there’s an infringement in the EU and the UK.
UK-based companies accused of infringement in the EU would no longer be sued in their home jurisdiction, but in the court of an EU state. And decisions by the Court of Justice of the EU would almost certainly no longer apply to the UK.
Exhaustion of rights
EU law currently applies the principle of exhaustion to the first sale in the EEA that takes place with the RCD owner’s consent. Given that the UK plans to leave both the EU and the EEA, first sale in the UK would not exhaust the RCD, which would allow the RCD owner to block parallel imports from the UK into the EEA. Whether re-sale in the UK of goods first sold elsewhere would be affected will depend on the exhaustion regime adopted by the UK post-Brexit. Under a no-deal scenario, the exhaustion regime would remain as it is, i.e. EEA & UK.
The Hague Agreement
The UK’s joining of the Hague system for industrial designs came into effect in June 2018, meaning businesses are able to choose design protection in the UK for international applications. It also allows UK businesses to continue to access the Hague agreement, and could provide a route to dual UK/EU protection. Existing EU registrations through the Hague system will likely be treated in the same way as RCDs, although this is the subject of discussions with the World Intellectual Property Office (WIPO) and the Hague Registry, as well as with the EU.