For months there has been question marks around what will happen to unregistered design rights after the end of the Brexit transition period, and in particular whether a design disclosed in the UK can be protected as an unregistered Community design (“UCD”). However, the EU Intellectual Property Office (“EUIPO”) has recently confirmed that designs first disclosed in the UK following the end of the transition period (from 1 January 2021) will not be protected as UCDs.
We consider the implications of this announcement, and some practical tips to help designers and businesses protect their designs after the end of the transition period.
UCDs v UKUDRs
UCDs and UK unregistered design rights (“UKUDRs”) arise automatically without the need for registration. Under the current legislative framework, UCDs and UKUDRs have slightly different qualification requirements and durations of protection.
With registered design rights, the applicant can designate the territory in which it is seeking protection; whereas, with UK or EU unregistered design rights, the territory in which the first disclosure of the design is made will dictate where protection is granted. If a first disclosure is made in a territory other than in which the designer is seeking protection, it can destroy the novelty in the design and void the protection afforded (for example, a first disclosure made in China may destroy the novelty in an UCD). Pre-Brexit, designers could benefit from protection arising under UCD and UKUDRs simultaneously, as a result of a first disclosure being made in the UK (as an EU Member State).
However, the EUIPO has recently confirmed that if the first disclosure of a design is made in the UK after the end of the transition period, the design will not be protected by UCD, and will instead be protected by a new UK unregistered design right called the supplementary unregistered design (“SUD”). SUDs are being created to provide similar protection to the UCD (i.e. protecting both two and three dimensional designs for a period of three years) in the UK following the end of the transition period.
Any designs protected in the UK as a UCD before the end of the transition period will be automatically established as a ‘UK continuing unregistered design’ on 1 January 2021 and will continue to be protected in the UK only for the reminder of its three year term.
The Government has confirmed that UKUDR will continue after the end of the transition period and will function alongside continuing and supplementary unregistered designs; however, the qualification criteria will be changed to include only individuals resident in, or businesses formed under the laws of, the UK (or a qualifying country).
The following table briefly summarises the type of unregistered design right that is likely to apply*, and its duration, based on the location and date of first disclosure of a design:
Location of first disclosure
Date of first disclosure of a design
Design right protection afforded
Duration of protection
On or before 31 December 2020
UCD until 1 January 2021, at which time it will be automatically established as a UK continuing unregistered design
The remainder of its 3 year duration
On or after 1 January 2021
Supplementary unregistered design
Any EU member State (other than the UK)
On or before 31 December 2020
Unregistered Community design (which will include protection in the UK up to the 31 December 2020)
On or after 1 January 2021
Unregistered Community design (but will no longer cover the UK from the 1 January 2021 onwards)
*Subject to the relevant qualification criterion being met.
This announcement will undoubtedly be very disappointing news to designers and businesses across the UK and EU. Unregistered designs are an easy and free way for designers to receive EU-wide protection for their designs in industries where it may not be possible or practical to seek registered designs for each and every design (for example, in the fashion sector where many designs typically change each season).
Going forward UK designers and businesses will need to give careful consideration to the territory in which they would like their designs to be protected, and therefore where the first disclosure of a design is made. An example where this may have a detrimental impact on the UK, is in relation to the fashion industry. Typically, London Fashion Week occurs before other Fashion Weeks in Europe, including Paris and Milan. Therefore, if designers and retailers decided not to showcase their new designs in London, instead prioritising Paris or Milan (as EU Member States) as the location of their design’s first disclosure, it could have a significant impact on the UK from an economical and cultural perspective.
One potential way around the issue of first disclosure is to simultaneously disclose a design in both the UK and EU (for example by uploading the design to e-commerce websites in the UK and EU at the same time). This would aim to maximise the protection for the design, and not destroy the novelty of the design in the other territory. If simultaneous disclosures are attempted, it will be interesting to see if the UK and EU courts will uphold the validity of the design. It is likely we will only find out when a design is enforced, at which stage the stakes are high for both parties involved.
For now, the position remains far from certain. Therefore, designers and businesses should not forget about utilising registered designs and even copyright (following the decisions in Cofemel and Response Clothing Ltd v The Edinburgh Woollen Mill Ltd) to protect their designs. Registered designs in particular remain an easy and cost-effective way to protect designs in both the UK and EU, and so designers and businesses should consider registering more designs, at least in the interim.
Regardless of what happens in respect of simultaneous disclosures in the UK and the EU, it’s worth remembering that there remains a pending reference to the Court of Justice of the European Union (“CJEU”) in Beverly Hills Teddy Bear Company v PMS International Group plc  EWHC 2419, in which the High Court asked the CJEU to rule on whether an event of disclosure must take place in the EU, or if it is sufficient for a first disclosure made elsewhere to qualify for UCD protection, providing the disclosure was such that ‘circles specialised in the sector concerned’, operating in the EU became aware of it.
The High Court also asked the CJEU to decide on whether the date for assessing the novelty of a design is; the date on which the design qualified for UCD protection, the date on which the design became known to the ‘circles specialised in the sector concerned’ operating in the EU, or some other date and if so, which date.
Depending on the CJEU’s decision, it remains a possibility that a first disclosure made in the UK could get UCD protection via the “backdoor” if the design becomes known to “circles specialised in the sector concerned”. Although, based on the EU’s approach to Brexit discussions to date, this seems unlikely.
What is clear is that careful consideration should be given to disclosures of new designs, to ensure you maximise the IP protection available to you. However, we expect that designers and businesses will continue to be creative in their thinking, in order to maximise the protection they deserve for their designs.