Design Protection Post Brexit

September 27, 2017

Current UK/EU Design Protection Position

Currently in the UK there are four different types of design protection, namely UK and EU registered design rights, and UK and EU unregistered design rights. Registered designs require the following of a registration process. In contrast unregistered design rights come into existence automatically.

Registered Design Protection

UK and EU registered design protection has been harmonised, and therefore the same protection is provided by a registered design in the UK, irrespective of whether that registered design is a national UK design registration or an EU design registration.

The EU registered design process is a very cost effective system when protection is required in the EU beyond just the UK. Whilst the exact legal position post Brexit is currently far from clear, EU registered design applications will no longer cover the UK.

Details of what will happen in relation to existing EU registrations in relation to protection in the UK have yet to be published, and we are monitoring the position closely.

Unregistered Design Right

UK and EU unregistered design protection is not harmonised. UK unregistered design rights only protect the shape of articles. UK unregistered design right can last for up to ten years from the end of the year when a design is industrially applied, or fifteen years from the end of the year from which a design is first made, whichever is the shorter. For the last five years of either of the above periods, the registration will be endorsed ”licence of right”, and licences will be available to third parties to produce the design, with the terms of any licence being decided by the UK Intellectual Property Office (UKIPO) or courts if required.

In contrast, EU unregistered design right can cover the shape of an article and/or the pattern applied to an article. EU unregistered design right, however, only lasts for three years from when a design is made available to the public in the EU. EU unregistered design right was introduced particularly to provide protection for the fashion industry and the like, and can be particularly useful in providing short term protection for surface patterns and designs. Post Brexit, EU unregistered design right will only be available for designs first made available in the EU, i.e. not for designs which are first made available in the UK.

Unlike registered designs, unregistered design rights can only be infringed if actual copying of a design can be established.

Action to be Taken

Registered Design Right

In view of the uncertainty as to the position for EU registered designs post Brexit, we would advise if filing an EU registered design application, that consideration is given to also filing a separate UK registered design application. In view of the six month priority term available for designs under the Paris Convention it would be possible to file one of a UK national or an EU design application, and follow this up with the other within six months and claim the filing date of the earlier application, for the subsequent application.

Unregistered Design Right

If reliance is usually placed on EU unregistered design right, protection, and particularly for surface patterns or designs, then it would be appropriate to consider seeking registered design protection going forwards, to provide protection for the particular surface design or designs. Otherwise post Brexit such designs may be unprotected in the UK, and perhaps throughout the EU.

Swindell & Pearson is a UK based intellectual property firm that has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 135 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton upon Trent. To find out how Swindell & Pearson can help you and your business with any patent, trade mark or design right matters please get in touch via [email protected] or by telephone on 01332 367 051.