Unregistered design right after Brexit - First publication in the UK vs. first publication in the EU - Registered Designs

Summary

The law in the UK and the EU generally concerning unregistered design right and copyright for designs is complicated, with a number of overlapping rights and exclusions, and many complexities concerning what rights may exist and in which circumstances. The situation became yet more complex following Brexit, when the UK finally left the EU with effect from 1 January 2021, with further exclusions applying and with new rights being created.

 

In as brief a summary as we can:

 

A UK business or a UK national or resident should ideally make the first disclosure of a design in an EU country so as to get an EU UCD (European Community unregistered design right) which provides 3 years’ unregistered protection for the shape and/or pattern or ornament of a design throughout the EU. Unregistered rights for the design in the UK will normally already be provided for UK businesses, nationals and residents by national UK unregistered design right for the shape and by UK copyright for the pattern or ornament, regardless of where the design is first disclosed.

 

The same position applies for businesses, nationals and residents of Hong Kong and New Zealand and a handful of other countries, which are mainly ex-UK dependent territories.

 

For businesses, nationals and residents of other countries, including those based in amongst others the EU, the US, Canada, Australia, China, Japan, South Korea and Turkey, national UK unregistered design right is not available to cover the shape of a design (though UK copyright provides unregistered protection for the pattern or ornament of a design to businesses, nationals and residents of practically all countries).

 

A new UK SUD (“supplementary unregistered design”), analogous to the current EU UCD, has been created for designs first published on or after 1 January 2021. This will be available to businesses, nationals and residents of all countries, but only if the design is first published in the UK. Likewise, the EU UCD is only obtained if the design is first published in an EU country.

 

Therefore, for unregistered protection for the shape of a design, businesses, nationals and residents of such other countries should decide if they can publish first in the UK to obtain a UK SUD or in the EU to obtain an EU UCD.

 

Registered designs for the shape and/or the pattern or ornament can be obtained by application to the UK Intellectual Property Office for the UK and, separately, to the EU Intellectual Property Office for the EU, by businesses, nationals and residents of any country. The costs of such applications are relatively low and such designs are almost invariably registered with no objections by the relevant Intellectual Property Office. See also the discussion on novelty requirements below.

 

Registered designs can remain in force up to 25 years subject to payment of renewal fees every 5 years. Registered designs also provide better protection in that they cover designs produced independently by third parties, whereas the various unregistered rights are only infringed if copying by the third party is proven. The protection provided by a registered design is therefore broader in this respect.

 

 

Details

1. On 1 January 2021 (the end of the Brexit transition period when the UK left the EU), for the UK, already existing unregistered European Community design rights (EU UCDs) were immediately and automatically replaced by UK rights (a UK “continuing unregistered design”), in force for the remainder of the 3 year protection period of the EU UCD. The owner of an existing EU UCD right does not need to do anything at this stage[1].

 

1. From 1 January 2021, newly established EU UCDs will not provide protection for the UK. Rather, from 1 January 2021, a new UK unregistered design right called a “supplementary unregistered design” (SUD) was created, valid only for the UK, to provide protection equivalent to an EU UCD. The UK SUD can arise for nationals of any country, though a UK SUD will be established only if first disclosure of the design takes place in the UK.

 

3. From 1 January 2021, first publications in the UK, being then outside the EU, will – at least according to the current practice – no longer give rise to a EU UCD to provide unregistered protection in the EU. (This is the same as the current position for when first publication takes place in any non-EU country.)

 

The publication in the UK can at the same time be novelty-destroying in the EU, should one later seek to claim EU unregistered rights[2]. The effect of publication should also be taken into account with respect to any later filed registered designs (though a 12 months grace period is available for EU and UK registered designs).

 

Thus, there seems to exist a dilemma regarding the possibility of obtaining an EU UCD or a UK SUD for a non-registered design, having to choose between protection in either the UK or the EU (provided in either case that first publication of the design takes place in the UK or EU respectively). The EUIPO publications concerning this to date leave this question open.[3]

 

In the case that a design is first published online, for example on a website or on some social media platform, there is a question as to what might be regarded as the country that is applicable for that first publication. The CJEU were potentially deciding on a similar question presented to it in the case Beverly Hills Teddy Bear Company v PMS[4]. However, that reference has now been withdrawn. At present therefore, what counts as the “country” for an online publication is still an open question.

 

Therefore, and unless the law changes, businesses and individuals should thoroughly evaluate, from 2021 on, whether they might want to benefit from an EU UCD (an unregistered Community design to cover the EU countries) or from a UK SUD (to cover the UK) before publishing their new designs and choosing the place of first disclosure with care. In particular, if an EU UCD is desired or needed, one should above all not first publish the design in the UK, such as at UK trade fair shows or by first sale in the UK, and should instead ensure that first publication takes place within an EU country.

 

4. Notably, Brexit does not affect the different national unregistered rights already provided by UK law. These rights are given regardless of where first publication takes place.

 

In particular, first, the UK already provides a UK unregistered design right (UK UDR) to businesses, nationals and residents of “qualifying countries”, which include the UK, Hong Kong, New Zealand and a handful of other ex-UK dependent territories. UK UDR protects the shape or configuration of the design, for the shorter of 15 years from when the design was made and 10 years from the design was first marketed. This is regardless of where the design was first published.

 

For businesses, nationals and residents of other countries, including those based in amongst others the EU, the US, Canada, Australia, China, Japan, South Korea and Turkey, national UK UDR is not available to cover the shape of a design.

 

Secondly, UK copyright provides unregistered protection for the pattern or ornament of a design. In line with copyright for any type of work (musical, literary, artistic, etc.), this applies for nationals of practically all countries, with a term of 70 years from the designer’s/author’s death.

 

Therefore, for unregistered protection for the shape of a design, businesses, nationals and residents of countries other than the UK, Hong Kong, New Zealand and the other “qualifying countries”, should decide if they can publish first in the UK to obtain a UK SUD or in the EU to obtain an EU UCD.

 

On the other hand, a business or national or resident of the UK, Hong Kong, New Zealand and the other “qualifying countries” should ideally make the first disclosure of a design in an EU country so as to get an EU UCD. As stated, unregistered rights for the design in the UK will normally be provided for such businesses, nationals and residents by national UK unregistered design right for the shape and by UK copyright for the pattern or ornament.

 

5. All of the above concerns, complexities and gaps in coverage concerning unregistered rights in a design can be avoided by registering the design. Registered designs for the shape and/or the pattern or ornament can be obtained by application to the UK Intellectual Property Office for the UK and, separately, to the EU Intellectual Property Office for the EU, by businesses, nationals and residents of any country. The costs of such applications are relatively low and such designs are almost invariably registered with no objections by the relevant Intellectual Property Office.

 

Registered designs can remain in force up to 25 years subject to payment of renewal fees every 5 years. Registered designs also provide better protection in that they cover designs produced independently by third parties, whereas the various unregistered rights are only infringed if copying by the third party is proven.

 

How we can help …

Page White Farrer has offices in Munich, London and Leeds and a team of European, German, Finnish, French and UK qualified patent, trade mark and design attorneys.

 

We provide a comprehensive, one stop shop for all European intellectual property. In particular, we can handle the registration of the same design in the UK IPO and EU IPO at the same time, using the same experienced team of personnel.

 

In the meantime, do not hesitate to contact Oliver Spies (Munich), or David Roberts (London) or your usual contact at our firm if you have any questions concerning the impact of Brexit on your design rights or on design rights generally.

 

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since this article was first published in March 2021.

 

---

 

[1]    https://www.gov.uk/guidance/changes-to-unregistered-designs-after-the-transition-period

[2]    If the publication, even being outside the EU could reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community

 

[3]    Brexit Q and A EUIPO (https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/Brexit/Brexit_Q_and_A_en.pdf):

28. Can a design disclosed in the UK be protected as an unregistered Community design?

Yes, provided that the disclosure of the design in the UK occurred before the end of the transition period (Art. 11(1), 110(5) Community Design Regulation). However, its territorial scope of protection ceases to extend to the UK as from the end of the transition period (Art. 1(3) Community Design Regulation) and continued protection in the UK is to be granted by the UK as an equivalent intellectual property right (Article 57 UK Withdrawal Agreement).

 

[4]     https://www.bailii.org/ew/cases/EWHC/IPEC/2019/2419.html The Intellectual Property Enterprise Court (IPEC) in the case Beverly Hills Teddy Bear Company v PMS recently referred two questions to the Court of Justice of the European Union (CJEU) regarding unregistered community design (UCD) protection:

 

In the view of the Federal Supreme Court, in order for a design to be afforded UCD protection, the event giving rise to the first disclosure of the design – such as the marketing of a product made according to the design – must first take place within the territory of the EU. If before that date there has been an event outside the EU giving rise to the design being disclosed, in circumstances such that the event could reasonably have become known in the normal course of business to the relevant circles in the Community, the design for which protection is sought will lack novelty.

 

1. For the protection of an unregistered Community design to come into being under art.11 of Council Regulation (EC) No. 6/2002 of 12 December 2001 ('the Regulation'), by the design being made available to the public within the meaning of art.11(1), must an event of disclosure, within the meaning of art.11(2), take place within the geographical confines of the Community, or is it sufficient that the event, wherever it took place, was such that, in the normal course of business, the event could reasonably have become known to the circles specialised in the sector concerned, operating within the Community (assuming the design was not disclosed in confidence within the terms of the final sentence of art.11(2))?

 

2. Is the date for assessing the novelty of a design for which unregistered Community design protection is claimed, within the meaning of art.5(1)(a) of the Regulation, the date on which the unregistered Community design protection for the design came into being according to art.11 of the Regulation, or alternatively the date on which the relevant event of disclosure of the design, within the meaning of art.7(1) of the Regulation, could reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community (assuming that the design was not disclosed in confidence within the terms of the final sentence of art.7(1)), or alternatively some other, and if so, which date?