Brexit and unregistered design rights

The UK has recently released a Draft UK-EU Comprehensive Free Trade Agreement which is intended to form the basis for discussions with the EU. We outline the implications for unregistered Community design rights in the EU and supplementary unregistered design rights in the UK.

The UK formally left the EU on 31 January 2020 but for most intents and purposes, the relationship between the parties is still subject to the relative status quo of the transitional arrangements which, unless extended (and the UK government are apparently refusing to do this) will terminate on 31 December 2020. Thus, unless or until the UK has agreed new, formal arrangements with the EU, it is unclear at this stage as to what the future trading relationship between the parties will be.

The potential arrangements for intellectual property has seen some relative initiative by the UK government. In particular, the UK has recently released a Draft UK-EU Comprehensive Free Trade Agreement which is intended to form the basis for discussions with the EU.

Part of this draft agreement relates to IP, at Chapter 24 thereof. Of interest is Article 24.28 which deals with the matter of disclosure of unregistered Community design rights in the EU and the equivalent supplementary unregistered design rights in the UK.

A proposal for Brexit

New unregistered Community design rights will no longer have protection in the UK after the end of the transition period. Designs that are protected as unregistered Community design rights before the eventual end of the transition period will remain protected and enforceable in the UK for the remaining period of their three-year lifespan as a ‘continuing unregistered design’. Once the transition period does formally end, the UK will introduce an equivalent right in the UK known as a ‘supplementary unregistered design right’ which will replace the unregistered Community design right in respect of the UK but is an equivalent right as such.

The relevant provisions in the Government’s Draft UK-EU Comprehensive Free Trade Agreement therefore proposes equivalence between the UK and the EU in that disclosing a design in either the territory of the EU or the UK will satisfy the disclosure requirement for both an unregistered Community design right in the EU and a supplementary unregistered design right in the UK. Currently disclosure of the design outside of the EU (which will obviously include the UK once the transitional provisions end) will terminate the novelty requirement of an unregistered Community design protection in the EU. An EU or UK designer could therefore first disclose a design in the UK without that design destroying the novelty of an unregistered Community design right and a first disclosure in the EU will not terminate the equivalent supplementary unregistered design protection in the UK.

While this is undoubted good news for UK designers in particular, given the relative size and importance of the EU market to the UK market, it will be interesting to see if the EU ultimately agrees to this.

For more information on the implications of Brexit on your IP, please download our Brexit checklist of IP action points or contact us below.