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.
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:
Owners of RCDs will not:
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.
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:
The application must relate to the same design as the pending community design application.
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.
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.
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
John L. Hemmer