Brexit & Designs
Design protection in the UK comes in 2 forms; EU wide rights and national UK rights. UK national rights will be unaffected by Brexit. EU design rights, which currently cover the UK, will remain in place and enforceable in the UK until new provisions are put in place to give them continuing, or corresponding, effect in the UK.
Do I need to take any action with my Community Registered Designs (RCD) now?
No – you don’t need to take any action regarding your RCD portfolio now. In the coming months and years there will be changes to address the UK's departure from the EU; we expect new processes and legislation will be put in place to continue your IP rights without any loss. HGF shall be keeping you updated and informed as developments unfold and will be on hand to advise and help you plan your future European design strategy.
What will happen to RCDs after Brexit?
Once the UK actually leaves the EU, RCDs will most likely not cover the UK. It seems very unlikely, given the unitary nature of RCDs, their territorial scope would extend beyond the EU Member States.
We envisage the creation of a transitional period, allowing for RCD registrations to be split into and “back dated” as UK design registration with no loss of rights, resulting in both a UK design right and a RCD (not covering the UK). Once the UK is outside the EU, new RCDs will not cover the UK and therefore it would be necessary to obtain a national UK design registration alongside a RCD.
Should I reconsider my design protection strategy in light of Brexit?
If your particular product is UK centred, and has a very limited interest in the EU beyond the UK in the longer term, then a UK design application may be your best course of action.
However, if you have business interests in both the UK and a number of EU member states and present strategy is to only file RCD applications, we would recommend continuing with that strategy in the short term.
In October 2016 the cost to register designs in the UK is expected to be reduced considerably, especially for multiple design protection for single products. So from that date, filing both RCDs and UK design applications may be an even more attractive to design owners.
Any agreements containing clauses which regulate the ownership and use of designs in the EU should consider the territorial scope of the agreement, in particular, how the EU is defined at the date of the agreement. Parties to existing agreements may want to review terms once the situation regarding RCDs has been established – HGF can assist you with the review of any agreements.
What about unregistered design rights?
There are currently 2 parallel systems in the UK for protecting unregistered designs: UK unregistered design right and EU unregistered design right. The scope and term of protection offered by these 2 distinct rights are different in a number of important elements. For instance surface decoration is not protected by UK unregistered design right but is protected by the EU right.
Even though it only has a term of 3 years (as opposed to up to 15 years for UK unregistered design right) the EU unregistered design right has been a popular addition to the armoury of those seeking to protect rights in a number of different sectors. The fashion industry in particular has found the right a very useful tool.
When the UK exits the EU, EU unregistered design right will no longer be available to prevent infringing acts in the UK. However UK based parties should still be able to rely on the right to bring legal actions in the remaining EU countries. It may well be that the UK enacts an unregistered design right equivalent to the EU unregistered design right to ensure that there is no gap in protection for the UK design industry. It would be a loss to the protection of designs in the UK if no right equivalent to the EU unregistered design right remained available in the UK after Brexit.
If you have any questions or concerns about IP Rights in the UK outside the EU, or would like further advice on this matter, please contact your usual HGF attorney.