The UK Government has now approved draft regulations, The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, which set out what will happen to European Union Design rights on "exit day". A link to the text can be found here.
We have already reported the position in relation to Trade Marks and Brexit, a link to which can be found here.
The draft Regulations will come into effect on exit day, currently set to be 29 March 2019 in the event of a 'hard' or 'no deal' Brexit. However, the effect of the Withdrawal Agreement, if it is ultimately ratified by the UK and EU Parliaments, will be to delay the date the new Regulations come into force until 1 January 2021. Another possibility is that the negotiation period provided by Article 50 will be extended, pushing back exit day to some future date. Whatever date the new Regulations come into force, the provisions of the Regulations themselves are unlikely to change. The main points to note in relation to Designs are as follows.
Registered Community Designs (RCDs) and International Design Registrations that Designate the EU
An RCD which is, immediately before exit day, entered in the RCD register and has been published in the Community Designs Bulletin will be treated as if it is a UK Design Registration on exit day, and be known as a "Re-registered design". It will be entered automatically onto the UK register, without any payment of fees, "as soon as reasonably practical on or after exit day". The date of application, date of registration and any applicable priority date will be the same as the original RCD, as will the date for assessment of whether the design is new and has individual character.
The same provisions are made for International Design Registrations (under the Hague Agreement) which designate the EU and where, immediately before exit day, the EU IPO has confirmed protection of the design to WIPO. They will be known as "Re-registered international designs".
It will be possible for owners of an RCD to opt out from the re-registration of their design in the UK by filing a notice to this effect at any time on or after exit day.
Pending Community Design Applications Immediately Before Exit Day
A Community Design Application which has been given a filing date by the EU IPO, but which is not granted or refused by the EU IPO immediately before exit day, will need to be refiled at the UK IPO as a UK Design Application within a period of 9 months beginning with the day after exit day (so 30 December 2019 in the event of hard Brexit). The new UK application will be given the same filing date (and any applicable priority date) as the Community Design Application. Again similar provisions are made for pending International Design Registrations which designate the EU.
At this stage, the UK IPO has not provided any information on the application process for a new UK Design Application that stems from a pending EU Design Application, though it could be as simple as indicating the relevant pending Community Design Application at the time of filing.
It will also be necessary to refile in the UK where there is an existing RCD whose publication has been deferred under the EU Designs Regulation (it is possible to defer for up to 30 months from the filing date). The period in which it will be necessary to reapply will be the same nine month period as for pending applications. Similar provisions are also made for International Design Registrations which designate the EU and which are subject to deferred publication.
Again, the UK IPO has not provided any information on the application process for registered RCDs with deferred publication. Also, as UK Law only provides for a period of up to 12 months to defer publication, it is not clear at this stage for how long it will be possible to defer the publication of the new UK case.
Unregistered Community Design Rights
The new regulations provide that Unregistered Community Design rights that subsist on exit day will continue to have effect in the UK as "continuing unregistered community designs". They also provide for a new "supplementary unregistered design right", which will be identical to the Community Unregistered Design right, save that it will relate to the UK only. It will subsist automatically once a design that is new and has individual character is made available to the public after exit day.
At present, given the speed of registration of an RCD at the EUIPO, clients may not feel that it is absolutely necessary to dual file design applications in the UK and EU, particularly given that there will be a 9 month period to refile in the UK after exit day. It is however advisable where immediate enforcement of design rights in the UK is required. Once the date the new regulations will come into force is known, the position may change and we will advise at that stage.
Those with RCDs that are the subject of deferred publication may want to consider bringing forward publication in the Community Designs Bulletin, so as to avoid the need to refile UK design applications after exit day.
After exit day, it will, of course, become a necessity to file design applications in both the UK and EU, if protection is required in both jurisdictions. J A Kemp will be able to file in both given that we have offices in the UK and in Paris, France (J A Kemp SNC, established February 2018).
Clients with RCDs on our records can rest assured that J A Kemp will add the new Re-registered Designs (and Re-registered International Designs) to our records at no charge. We will notify clients of this in due course, and seek instructions in the unlikely event clients wish to opt out from re-registration in the UK. We will also notify clients who have pending Community Design Applications and RCDs with deferred publications on our records on exit day and seek instructions as to whether they wish to refile in the UK within the 9 month period to do so. Clients who use other EU counsel for their EU Designs at present may wish to use J A Kemp for UK Designs in the run-up to and post-Brexit. At the time of writing, we offer a 50% reduction on our UK service charge for filing when a corresponding UK case is parallel filed with an EU application, whether or not J A Kemp filed the EU case.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.