From 1 January 2021, Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) will no longer have protection in the UK and will continue in force or apply in the remainder 27 EU member states. The rights arising from RCDs and UCDs will be automatically replaced by UK rights. The UK IPO has set out the changes to design protection here
Registered Community Designs (RCDs)
The key changes that apply to EUTMs from 1 January 2021 are broadly the same for RCDs:
- New UK design registrations will be automatically created which mirror the EU counterpart registrations; and
- For any pending EU Community design applications, owners will have 9 months to file a UK application which mirrors their EU application and will benefit from the same filing and priority dates.
Deferred Publication
In addition to the changes to RCDs and Community design applications, you should note the important changes relating to Deferred Publication, which is a useful tool where you want to keep your design secret from your competitors. Publication of an RCD can be deferred for up to 30 months. However, If you don’t publish your design, it will be as if it never existed.
If your RCD is deferred on Exit Day, it will be treated as a pending application, and you will have 9 months to file an equivalent UK registered design application in order to preserve the RCD’s earlier filing and priority dates.
It is important to note that:
- publication cannot be deferred in the UK to a date that is later than the end of the deferment period for the RCD;
- it will not be possible to defer for more than 12 months from the date on which the UK application is filed. The UKRD system only allows for designs to be deferred for up to 12 months, rather than the 30 months provided for under the RCD system.
Unregistered Designs Rights
Protection afforded by unregistered design rights is a critical weapon for those companies for which design registration is not practical, either due to the cost of filing or the short expected lifetime of their designs. There are currently two systems in the UK for obtaining unregistered designs rights protection: unregistered community designs (UCDs) and UK unregistered design right (UK UDRs).
After Exit day UCDs will no longer apply to the UK. The impact of Brexit on the unregistered design protection regime, which is more complex than that for registered design protection, opens up the possibility of a gap in protection for holders.
To bridge this gap and to avoid a potential loss of UCD protection on Exit Day, two new unregistered design rights have been created:
- Continued Unregistered Designs (CUDs)
UCDs existing at the end of the Transition Period will continue to be protected and enforceable in the UK for the remaining period of the 3-year protection of the right
Designs disclosed after the UK exits the EU will still be protected in the UK under the current terms of the unregistered community design.
- Supplementary Unregistered Designs (SUDs)
UK will create a new unregistered design right in UK law that mirrors the characteristics of the unregistered community design, which will sit alongside the existing UK unregistered design.
Both the CUD and SUD, which come into effect after the end of the transition period, will mirror the UCD in terms of validity, infringement and term.
What happens next
If you own an existing design right, you do not need to do anything at this stage. However, whilst the various measures which the UK government has taken to compensate for the loss of Community design protection in the UK after the end of the transition period are to be welcomed, they serve to make an already complex legal landscape even more so. Therefore, businesses will need to be well prepared for these changes.