Brexit Update

As you will be aware, the United Kingdom has left the European Union (“Brexit”).    The Brexit transitional period, during which EU laws and rights have continued to have effect in the UK, is due to end on 31 December 2020.   Thereafter, EU Trade Mark and Design applications and registrations (and designations of the EU under the International Trade Mark and Design systems at WIPO) will only cover the remaining 27 EU Member States.  Beck Greener will continue to represent these rights at the EUIPO.

The purpose of this notice is to set out some of the consequences of Brexit as regards continued registered and unregistered protection in the UK of rights previously protected at the EU level.

1. Applications and Registrations for EU Trade Marks and Designs

On 1 January 2021 trade marks and designs registered at the EUIPO (including granted designations under the International Trade Mark and Designs systems) will automatically generate corresponding UK national trade mark and design registrations (“Cloned UK registrations”), except in the case of applications for EU designs which had their publication deferred beyond 31 December 2020.  We will be writing to you shortly with details of the Cloned UK registrations deriving from EU rights we are handling for you or your clients, and an explanation of our procedures for handling these new Cloned UK registrations (which will be entered onto our records and notified to you without charge).

Applications for EU Trade Marks and Designs (including designations of the EU under the International System administered by WIPO) which have been filed by 31 December 2020 though not yet granted protection by that date, or applications for Registered Community Designs which had their publication deferred beyond that date, will give rise to corresponding UK applications (“Cloned UK applications”) with the same filing/priority date as the EU application/designation only if a request is filed with the UKIPO before 30 September 2021 and the relevant application fee is paid to the UKIPO.  Again, we will be writing to clients for whom we are handling pending applications/designations for EU Trade Marks and Designs shortly with details as to the desirability, cost and procedure for obtaining a Cloned UK application.

2. Unregistered Design Rights

Under EU law, subject to certain exceptions, an EU Unregistered Design right comes into existence automatically from the date the design is first disclosed (provided that this disclosure could reasonably have come to the attention of those specialised in the sector concerned operating in the EU), and expires three years later.  Such rights can only be enforced against third parties who can be shown to have copied the Claimant’s design.  Obtaining registration of these designs within a year of such disclosure provides greater protection and can be renewed up to a maximum of 25 years.

Holders of EU Unregistered Design rights in designs which are first disclosed in the manner described above in the UK or EU prior to the end of the Brexit transition period on 31 December 2020 will still be protected in the UK for three years after disclosure by virtue of the creation of a corresponding new UK Continuing Unregistered Design (“CUD”).  Owners of such rights can still apply to register their designs in the UK, the EU or beyond to secure stronger extended protection within one year after disclosure.

In addition, designs first disclosed in the UK from 1 January 2021 onwards will give rise to a new UK ‘Supplementary Unregistered Design’ (“SUD”) right automatically from the date of such disclosure, expiring three years later.

However, it has been confirmed this week that designs disclosed in one of the remaining EU countries from 1 January 2021 onwards will no longer automatically qualify for the SUD in the UK, and designs disclosed in the UK from 1 January 2021 onwards will not necessarily automatically qualify for EU Unregistered Design.  Nonetheless, disclosure in any one of these territories may destroy the novelty in the design, preventing unregistered rights coming into existence in any other such territory.

Therefore, where proprietors need short term protection against copying of their designs, they should consider carefully whether first to make their designs public in the UK or the EU to be confident of obtaining unregistered rights in the preferred territory, and ideally seek to register the design as soon as possible (and in any event within 12 months after the first disclosure).

Note that nothing in the above affects the scope of the wholly separate UK design rights which exist by virtue of the Copyright, Designs and Patents Act 1988, which will continue to accord protection to the shape and configuration of three dimensional articles in certain circumstances for up to 15 years from the end of the calendar year of their first disclosure.

If you have any questions on your unregistered design rights or you want to ensure that you will continue to have the protection you need post-Brexit, we will be happy to advise in this difficult and complicated area of law.