Brexit is currently one of the biggest challenges facing UK industries, especially when it comes to intellectual property rights and protecting your designs.

We asked Graham Coles & Co, who have almost three decades of expertise in patents, trademarks, and other intellectual property rights, to explain what might happen to design rights after Brexit. Simon Coles MCITM explores the issue below.

Designs and Brexit

Original designs for the appearance of the whole or part of a product may be powerfully protected by EU-wide legal rights, but Brexit will have a big impact on this. Designers and rights holders have a few things to think about before it’s too late.

How it works now

New designs first disclosed in the UK receive automatic “Community Design” rights against copying in all EU Member States for three years, as well as separate UK Unregistered Design Right, which is enforceable in the UK for up to 15 years.

There are some differences in the nature of these UK and Community rights. For example, unregistered Community Design protects 2D “surface decorations”, which are specifically excluded from UK Unregistered Design Right.

A design may also be protected in the UK and all other EU Member States by Registered Community Design (RCD). This may be enforced for up to 25 years, provided that the design had not been disclosed more than 12 months prior to the date of application.

Registered and unregistered Community Designs are only protected in the UK by virtue of the UK’s membership of the EU. Without action by the UK government, these would no longer be enforceable in the UK post-Brexit.

After 29 March 2019 if there is a “no deal” Brexit (and likely even if there is a deal)

New designs first disclosed in the UK after Brexit will not qualify for protection as unregistered Community Designs. Their protection in the remaining 27 EU Member States could only be secured by filing applications for Registered Community Design.

The UK government has committed itself to ensuring that the property rights in all registered and unregistered Community Designs existing on exit from the EU will continue to be enforceable in the UK.

The details are sketchy, but they say this will be made possible by:

1. Existing Registered Community Designs being “cloned” as new, equivalent Registrations in the UK with the original effective filing date of the RCD. These new UK rights will be provided “with minimal administrative burden” and will then have a separate existence from the “donor” RCD, needing to be separately renewed and able to be assigned separately to a new owner. It is not yet clear what the “minimal administrative burden” will involve for owners.
2. The owners of applications for Registered Community Designs still pending on 29 March 2019 will be allowed nine months in which to apply for the same protection in the UK, retaining the effective date of the RCD application. However, there are no plans for the owners of these applications to be notified of the need to do so.
3. The creation of a new “supplementary unregistered design right” in UK law which matches the unregistered Community Design. This means that existing unregistered Community Design Rights will be upheld in the UK, and designs disclosed after Brexit will also be protected in the UK on the terms distinguishing the Community Design from existing UK Unregistered Design Rights. This will happen without any action required by owners.

What should design rights holders be doing?

1. As always, give careful consideration to protecting your designs by registration in all countries of interest. Remember that once the design has been disclosed, you only have a maximum of 12 months before the opportunity to register it is lost altogether.
2. If you want to protect any design in the 27 other EU Member States, you are likely to be in a better position by filing applications for RCDs now than by leaving it until later. This will reduce the likelihood that you will have to re-file and pay further official fees in order to secure registered protection in the UK.
3. If you wish to be sure not to incur the administrative burden that will be involved in maintaining the protection of your RCD in the UK post-Brexit (no matter how “minimal” that turns out to be) and your design was disclosed sufficiently recently, you may wish to consider separately applying for a UK Registered Design now.
4. Check whether you have any RCD applications that will still be pending on 29 March 2019 – for example, if they have been filed on the basis of deferred publication. If so, you may wish to file applications to register the subject designs in the UK to make sure that you do not overlook the nine-month limit for re-filing in the UK that would otherwise apply.
5. Think carefully about where you first disclose new designs. In the post-Brexit world, if the design was created by a British designer but was first disclosed in an EU Member State (perhaps at an exhibition) it may well qualify for both UK Unregistered Design Right and unregistered Community Design Right covering the remaining EU Member States. On the other hand, if it was first disclosed in the UK, the only protection available in the remaining EU Member States would be by registration.
6. Take advice from an IP Professional, such as a Chartered Trade Mark Attorney, who (despite their title) is qualified to advise you in detail about how best to acquire, manage and protect rights in designs – as well as trade marks, which are similarly affected by Brexit.

Further information may be found at the following links:

UK Government Statement on Trade Marks and Designs in a No Deal Brexit

Intellectual Property Office Article: “IP and Brexit – The Facts”

EUIPO FAQ on the impact of Brexit on EU Trade Marks and Community Designs.