IP Focus: Design Rights after Brexit

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IP Focus: Design Rights after Brexit

Following Acuity London’s breakfast seminar held in London last month, we highlighted the importance of IP protection to any business and the impact Brexit will have on EU based intellectual property rights (“IPRs”), particularly those which arise automatically, and which add huge value to UK based businesses whether they are actually aware of them or not.

It is common, particularly among SMEs, to overlook their IPRs and having an IP strategy as a key consideration in their wider corporate strategy. If the UK’s design-led industries are to continue to flourish, protection and knowledge about protection is paramount.

In the context of the rapidly changing and uncertain global economy and Brexit, it is an even more important time for companies to review their IP portfolios and strategies to ensure that their IPRs are adequately understood, protected and monetised in the UK.

All companies have some form of IP in their business whether it is patents, trade marks, copyright and/or design rights. Some arise automatically, such as copyright and unregistered design right whereas others require active registration, like patents and trade marks.

Design Rights

Focussing here on design rights, these can be both unregistered (arise automatically) and registered (require registration) and, at present, depending on their geographical scope, protect different elements of a design.

Registered Design Rights (UK and EU)

Registered design rights in both the UK and EU protect the shape, configuration and surface decoration of a design. To be eligible for registration, a design must be deemed “new” and have “individual character” i.e it must be novel and create a different overall impression to any other design already in the design field. It can offer exclusive protection for up to 25 years as a monopoly right and serves as a quick and accessible deterrent against third parties copying or otherwise using your design.

Registered community designs (“RCDs”) provide protection across all EU member states which currently include the UK.  UK registered designs (“RDRs”) only cover the UK. Post Brexit, RCDs will immediately lose protection in the UK.

Unregistered Design Rights (UK and EU)

With regard to unregistered design rights, the difference between UK and EU rights are markedly different. Both are free and come into effect automatically on first disclosure of the design in the applicable territory, however, crucially, UK unregistered design right (“UKUDR”) only protects the shape and configuration of a design and not its surface decoration such as pattern, material, ornamentation.

However, EU unregistered design right (“EUUDR”) covers both the shape and configuration of a design and its surface decoration.  Accordingly, various sectors such as the fashion industry rely heavily on this free and automatic EUUDR particularly in an industry where copying is rife.

What about Brexit?

In order to trigger EUUDR, the design must first be shown/made available in the EU.  After Brexit, this will not include showcasing a design in the UK.  Furthermore, if a design is first shown in the UK, for example at London Fashion Week, London Design Week or the London Design Festival, such exposure will preclude the design later acquiring the more valuable protection in the EU as it will no longer be considered novel in the design field. The design will instead only qualify for UKUDR (unless it is registered) which is currently far more limited in scope. By the same token, first disclosure in the EU will destroy the novelty requirement for UKUDR in the UK.

This would have seismic repercussions on the UK design industries and many industry bodies are lobbying the government for new laws and changes to be introduced without delay.

The government has suggested that it will introduce a new Supplementary Unregistered Design Right (“SUDR”) whereby designs first disclosed in the UK would automatically have the same scope of coverage as the EUUDR. However, unregistered protection will not extend to the EU so there would still be the same issue of first disclosure in the UK precluding unregistered protection in the EU and vice versa. The SUDR therefore doesn’t change the huge impact Brexit will have on designs requiring protection in both the UK and EU.

The future is potentially less bleak with regards to registered rights. The government has indicated that for all RCD rightsholders, it will automatically create a comparable RDR in the UK at no extra cost. However, this has not been formally confirmed.

With Brexit curtailing unregistered design rights, registered design right protection in both the UK and EU should become an even greater priority for businesses to protect their creative endeavours.

Accordingly, we would advise anyone involved the creative or design led industries to carefully review their IP portfolios and prepare for the undoubtable emergence of opportunists seeking to take advantage of new gaps in protection.

If you would like advice in relation to any of the above including a general IP audit of your current position, please contact Cordelia Payne in our Intellectual Property team. 

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