A key change to UK registered design law and practice is due to come into force on 1 January 2024: by this date it will be mandatory for all owners of UK registered designs who are not located in the UK to appoint a UK-based representative before certain actions can be undertaken in relation to those design registrations.
This will impact non-UK resident design owners in several ways, including the following:
- any new UK registered design applications in the name of a non-UK resident applicant must be filed by a UK-based representative; EEA-based representatives will no longer be recognised by the UK Intellectual Property Office;
- any invalidity proceedings to be brought against a third party's design registration by a non-UK resident challenger must be filed by a UK-based representative; and
- the defence of any invalidity proceedings brought against a design registration owned by a non-UK resident owner must be undertaken by a UK-based representative.
In the event that an invalidity action is filed against the design registration of a non-UK design owner, the UKIPO will set a relatively short deadline for appointing a UK representative. These notifications are frequently sent by post, and will be sent to the registered proprietor of the UK design registration as appearing on the register. In the absence of a response to the deadline set, the UKIPO will treat the design registration as abandoned, thereby denying the proprietor of an opportunity to defend the invalidity action. It is therefore advisable to appoint a UK-based representative for any live UK design registrations owned by non-UK resident owners, so as to avoid any difficulties or delays if invalidity proceedings are brought against those registered designs.
As such, and whilst design invalidity challenges are relatively rare compared to trade mark challenges for example, we recommend that non-UK resident owners of UK registered designs review their design portfolios and appoint a UK representative where appropriate. This will ensure that if any invalidity or other contentious proceedings are encountered in relation to those designs, the design owner will receive notification of such challenge as early as possible and will have immediate access to specialist UK design law advice for defending the challenge.
With a dedicated team of design attorneys with extensive experience in design work, Marks & Clerk are ideally placed to assist registered design owners not only in protecting new designs, but also in defending challenges brought by third parties against their design registrations, as well as bringing challenges against designs owned by third parties.
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.
