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Brexit and Design Rights: Ensuring Continued Protection

December 17, 2020

The Brexit “transition period” will come to an end on 31 December 2020, and from 1 January 2021, the United Kingdom will cease to follow EU rules. This brings significant changes to design law in the United Kingdom and European Union, relevant to all owners of Registered Community Designs and United Kingdom Registered Designs.

On 1 January 2021, Registered Community Designs (RCDs) will cease to offer protection in the United Kingdom. The United Kingdom Intellectual Property Office (UKIPO) has therefore put in place mechanisms to ensure continued protection to design owners.

Registered Community Designs

Effective 1 January 2021, the UKIPO will automatically create a “re-registered” United Kingdom Registered Design for every registered RCD – note that this does not include RCDs that are pending or subject to deferment as discussed below.

Re-registered UKRDs will:

  • be recorded on the UKIPO register;
  • keep the original RCD filing, priority, and seniority date(s); and
  • be fully independent rights that can be challenged, assigned, licensed, and renewed separately from the original RCD.

Owners of RCDs will not:

  • need to apply for a re-registered UKRD;
  • need to pay for a re-registered UKRD; or
  • receive a UK registration certificate (but the re-registered UKRD may be viewed on the UKIPO online register).

The registration number of the re-registered UKRD will be original RCD registration number with the prefix 9.

The re-registered UKRD will also retain the renewal date of the original RCD; however, a separate renewal fee will need to be paid to the UKIPO where it falls due from 1 January 2021 (even if the original RCD was renewed at the EUIPO prior to 31 December 2020).

There is no requirement for owners to appoint a UK representative for the re-registered UKRD; however, we suggest owners do so to ensure effective portfolio management.

Pending Community Design Applications

Where an RCD application and an RCD subject to deferred publication are still pending on 1 January 2021, owners will have until 30 September 2021 to apply to register a re-registered UKRD. It is important to note that unlike granted RCDs discussed above, the RCDs pending and with deferred publication on 1 January 2021 will not automatically be re-registered and must be re-filed by the owner. 

The application will:

  • retain the filing, priority, and seniority date(s) of the pending community design application; and
  • be subject to the usual UKIPO application fees (there will therefore be a duplication of application costs at the EUIPO and UKIPO).

The application must relate to the same design as the pending community design application.

Pending Invalidation Actions at the EUIPO

Where an RCD is subject to ongoing invalidation proceedings at the end of the transition period, and is subsequently invalidated, the outcome shall be applied to the corresponding re-registered UKRD.

This means that where an RCD is subject to invalidation proceedings at the end of the transition period and is subsequently invalidated, whether wholly or partially, the United Kingdom re-registered UKRD will also be invalidated to the same extent – without the need to bring a new invalidation action before the UKIPO. However, if the grounds for invalidating the RCD do not apply in the United Kingdom, the owner of the re-registered UKRD may file a derogation at the UKIPO requesting that the re-registered UKRD is not cancelled.

To invalidate an RCD and re-registered UKRD after 1 January 2021, separate proceedings will need to be initiated.

Unregistered Community Designs

Designs that are protected in the United Kingdom as an unregistered community design before 1 January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1 January 2021.

Such designs will continue to be protected in the United Kingdom for the remainder of the three-year term attached to it.

Under a new law, the United Kingdom is creating a UK unregistered design right called Supplementary Unregistered Design (SUD). This right will ensure that the full range of design protection provided in the United Kingdom before exit day will remain available after leaving the European Union.

Review Points for Design Owners

Portfolio

  • If design protection in the United Kingdom is unnecessary, owners may opt out of the re-registered UKRD.
  • If owners already own relevant UKRDs, opting out of the re-registered UKRD might reduce portfolio administration and duplicated costs such as renewal fees.
  • Keep in mind that a separate UKRD filing is needed if pursuing design protection in the United Kingdom after 1 January 2021.

Assignments

  • Assignments of RCD that are effective on 1 January 2021 will also apply to the re-registered UKRD, even if the assignment has not yet been recorded at the EUIPO.
  • If the assignment has not been recorded at the EUIPO, the re-registered UKRD will be granted to the assignor.

Licences

  • Licences (and other interests) in the original RCD that authorise acts in the United Kingdom will be treated as if they apply to the re-registered UKRD and should be recorded at the UKIPO.
  • Licensors should notify any licensees of the new re-registered UKRD and ensure the re-registered UKRD does not breach any existing agreements (if so, it may be necessary to opt out of the re-registered UKRD).

Exhaustion

  • IP rights that are exhausted both in the United Kingdom and European Union (and European Economic Area (EEA)/European Free Trade Association (EFTA) states) on 1 January 2021 shall remain exhausted. It will still be possible to import goods into any EU member state if they have already been placed on the market in the United Kingdom (and vice versa).
  • From 1 January 2021 there will be no further lawful parallel import to the EU/EEA from the United Kingdom.

Contacts

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers:

London & Brussels
Nick Bolter

Philadelphia
John L. Hemmer