UK: New Legal Framework For Designers In The UK And The EU

Since 1^st January 2021, Registered and Unregistered Community designs no longer cover the UK. In this guide, we outline the new legal framework for designers in the UK and EU, and the key changes and challenges that designers and rights holders will face going forwards. Due to our presence on both sides of the Channel, our firm is uniquely placed to help guide our clients through the new legal landscape.

Can my Community Designs be enforced in the UK?

Registered and Unregistered Community Designs are unitary intellectual property rights covering the EU27 member states only. Therefore, it is no longer possible to enforce a Registered or Unregistered Community Design in the UK. However, the holders of and applicants for Community Design rights before 2021 have either been granted a corresponding duplicate UK right or have the opportunity to apply for one within a grace period ending on 30 September 2021. Once obtained, the UK right can be enforced in the UK as a distinct and separate right to the base Community Design.

What do I need to do to ensure continuity of protection in the UK if I hold a Registered Community Design that was published before the end of 2020?

If you held a Registered Community Design that was registered and published before the end of 2020, the UK Intellectual Property Office automatically created a duplicate right corresponding exactly to your Registered Community Design. This duplicate right will have the same renewal date as the Registered Community Design upon which it is based. In order to maintain continuity of protection in the UK, the only requirement is to ensure any renewal fees falling due from 2021 onwards are paid in due time to the UK Intellectual Property Office.

What do I need to do to ensure continuity of protection in the UK if my application for a Registered Community Design had not been published before the end of 2020?

If you had applied for a Registered Community Design but your application had not been published before the end of 2020, the UK Intellectual Property Office will not have created a duplicate right for your design. However, any affected applicants are able to apply for a duplicate right to be created in the UK up to a final deadline of 30^th September 2021. Applications making use of this provision must be identical to the corresponding Community Designs as filed and, if accepted, will benefit from the same priority and filing dates as the base Community Designs.

Protection in the UK could alternatively be obtained by filing a priority-claiming application within the six month priority period under the Paris Convention. This would allow applicants to take advantage of the more relaxed formalities requirements in the UK, including most notably the ability to file more than seven views of the design.

What do I need to do to ensure continuity of protection in the UK if I had designated the EU in an International Design Registration before the end of 2020?

If the International Design Registration had obtained "protected" status in the EU before the end of 2020 it will have been treated as equivalent to a published Registered Community Design. In this case, a duplicate UK right will have been created automatically. However, if the International Design Registration had not obtained "protected" status in the EU before the end of 2020 it will have been treated as equivalent to an unpublished application for a Registered Community Design. In this case, the applicant must apply for protection in the UK separately, and at the latest by 30^th September 2021.

What do I need to do to ensure continuity of protection in the UK if I held an Unregistered Community Design that was live at the end of 2020?

Any designs that were protected as Unregistered Community Designs which were live at the end of 2020 are automatically protected in the UK under a duplicate right. The duplicate UK right will run for the remainder of the unelapsed term of the corresponding Unregistered Community Design upon which it is based. These duplicate rights came into existence automatically, and no action on behalf of the rights holder is necessary.

What do I need to do to ensure continuity of protection in the UK if I have an Unregistered Community Design for a design released after 2020?

There is no guarantee that equivalent protection for the design is possible in the UK. Unregistered Community Design protection is only available for designs that are first published in the territory of the EU. From 2021, the UK offers protection equivalent to an Unregistered Community Design for any designs that are first published in the territory of the UK or a qualifying country. However, this does not include designs first published in the EU. If it is less than 12 months since the design was originally disclosed, affected rights holders may wish to consider filing for registered design protection to secure appropriate protection for the design in the UK.

Do I need to specify a UK address for my duplicate UK registered designs?

The address for service specified on the base Community Registered Design will have been pulled across automatically by the UK Intellectual Property Office. There is no requirement that this address should be changed to a UK address. However, it is highly advisable that rights holders do so, to ensure that third parties and any relevant authorities have a local point of contact with the applicant. Our firm is able to offer a free service to list ourselves as the address for service for any duplicate UK registered designs. However, from 2021 onwards, it will be necessary to specify an address for service in the UK for new UK registered design applications.

I need protection in the UK and the EU for my future designs. Will design protection in these two jurisdictions cost more to obtain from now on?

Unavoidably, if protection is necessary in both the UK and the EU it will be necessary to file separate applications for the design in both territories. These applications require separate administrative processes and will occur official fees. However, due to our presence in both the UK and the EU, our firm is able to offer a substantial discount on our professional fees when UK and EU registered design applications are instructed together.

Can my UK-based Marks & Clerk attorney still file a Registered Community Design application for me?

Whilst our UK-based colleagues are no longer able to represent clients at the EU Intellectual Property Office, our EU-based colleagues can and will continue to do so. Our UK and EU design attorneys work closely with one another, sharing their expertise and insight, to ensure that each and every design filing is of the highest standard according to all relevant laws and practice. Due to our presence in both the EU and the UK, our firm is uniquely positioned to provide a seamless service covering both of these important jurisdictions. You won't even notice the difference.

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.