Insights

Brexit: What Happens to Your Registered and Unregistered Community Designs?

Firm Thought Leadership

The politicians are still talking, but exit day on March 29 gets ever closer and there is still no deal on the UK’s withdrawal from the European Union.  Last month we looked at how EU trade marks would be treated if the UK adopted the current Withdrawal Bill or left with no deal.  This month we turn our attention to designs, looking at both registered Community designs (RCDs) and unregistered Community designs.

Again, there are two options on the table for a March 29 departure.  First, the UK agrees the Withdrawal Bill (which sets out the terms of its withdrawal from the EU) and this governs the way in which RCDs and unregistered Community designs are treated, or second, the UK rejects the Withdrawal Bill and leaves with no deal in place.  Let’s look at the RCD and unregistered Community design proposals in light of each of those possibilities.

1.The UK adopts the Withdrawal Bill

  • There will be a transition period that runs from March 29, 2019 to December 31, 2020.
  • During this period, the UK will no longer be an EU member state, but will be treated as such under European law.
  • Proprietors of RCDs registered, or where applicable published following a deferral of publication, before the end of the transition period will automatically become the holder of an RCD in the UK for the same design.
  • The terms of protection under UK law will be at least equal to the remaining period of protection under EU law of the corresponding RCD.
  • The date of filing or priority under UK law will be the same as for the corresponding RCD.
  • The renewal date under UK law will be the same as for the corresponding RCD.
  • For RCD applications filed before the end of the transition period, but not yet granted, applicant has the right to file a corresponding UK application within 9 months from the end of the transition period (i.e. by September 30, 2021) and that UK application has the same filing and priority date as the RCD application.
  • The UK will take measures to ensure that proprietors of international designs that designate the EU under the Hague system continue to enjoy protection for them.  The UK has ratified the Hague Agreement. 
  • The proprietor of an unregistered Community design that arose before the end of the transition period becomes, by operation of the law, the proprietor of an enforceable intellectual property right in the UK that affords the same level of protection.

 

2.There is no deal

  • The UK government published its paper on the treatment of RCDs and unregistered Community designs on September 24, 2018, updated on January 17, 2019.  It is here.
  • RCDs will automatically have a new UK registered design granted that will come into force on the UK’s exit from the EU, currently scheduled for March 29, 2018 without loss of filing or priority date.  The equivalent UK registered designs will be treated as though they were applied for and granted under UK law and will be subject to UK renewal.  They can be dealt with independently of their corresponding EU RCD.
  • For RCD applications that are filed, but not granted, as at the date of the UK’s exit, currently March 29, 2018, there will be a period of 9 months in which that application can be filed in the UK with no loss of filing date or priority.  This makes the cut-off date December 29, 2019.
  • For international designs designating the EU, the same provisions apply.
  • The proprietor of an unregistered Community design that arose before the date of the UK’s exit will continue to enjoy protection in the UK after exit for the term of the unregistered Community design.
  • The UK is creating a new unregistered design right that mirrors the unregistered Community design right and which will protect designs disclosed in the UK after exit.  This will be known as the supplementary unregistered design right (to distinguish it from the existing, different and separate UK unregistered design right in the Copyright Designs and Patents Act 1988 that will continue to subsist).
With its offices in London and Brussels and lawyers qualified in the UK and in EU jurisdictions, Baker Botts is positioned to support you with all your UK and EU design right issues.  Our dedicated team of design right lawyers are closely following all Brexit-related developments.

 

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