October 2, 2018

As part of its planning for a no deal Brexit, the Government has been publishing Technical Notices across all sectors setting out information to allow businesses and citizens to understand what they would need to do in such a scenario.

On 24 September, the Government published a series of Technical Notices covering various aspects of intellectual property, including designs.

Registered Community Designs

If there is no deal, the Government says that it will ensure that the property rights in all existing RCDs will continue to be protected and to be enforceable in the UK by providing an equivalent design registered in the UK. These designs will be treated as if they had been applied for and registered under UK law. This means that they:

• will be subject to renewal in the UK;
• can form the basis for proceedings before the UK Courts and the IPO; and
• can be assigned and licensed independently from the EU right.

Applicants of RCDs whose applications are ongoing at the point of the UK’s exit from the EU will have a period of nine months from the date of exit to re-file with the IPO, under the same terms, for a UK equivalent right, retaining the date of the EU application for priority purposes, using the normal application process for registered designs in the UK. The usual UK fees will have to be paid.

As for designs filed through the Hague system and which designate the EU, the Government says it “will work … to provide continued protection in the UK after March 2019”.

Implications

• existing RCDs will continue to be valid in the remaining EU Member States;
• New equivalent UK registered rights copied over from existing RCDs will be granted “with minimal administrative burden”;
• RCD holders will be notified that a new UK right has been granted;
• provision will be made regarding the status of legal disputes involving RCDs that are ongoing before the UK courts and more information will be provided on this before the UK exits the EU;
• applicants with pending applications for a RCD will not be notified and after exit will need to consider whether they re-file with the IPO (as set out above);
• new applications for UK registered designs will be able to be filed in the UK as they are now at the cost specified in the UK fee structure; and
• UK applicants, like EU and third country applicants, will continue to be able to apply for RCDs as they do currently.

In terms of correspondence addresses and confidentiality for UK designs, if there is no deal, there will be no immediate changes to the UK address for service and privilege rules. There will be no immediate implications for UK, EU or third country businesses. The current rules will remain in place at the point the UK exits the EU.

Unregistered Community Designs and UK unregistered design rights

The Government says that it will ensure that all UCDs that exist at the point that the UK leaves the EU will continue to be protected and enforceable in the UK for the remaining period of protection of the right.

In addition, the Government will create a new unregistered design right in UK law that mirrors the characteristics of the UCD. Therefore, designs disclosed after the UK exits the EU will be protected in the UK under the current terms of the UCD. This new right will be known as the “supplementary unregistered design right” and will arise automatically.

UK unregistered design rights that exist at the point of exit will continue to be protected and the UK unregistered right will continue to exist for designs first disclosed in the UK. The Government says that it will amend legislation “to ensure that it functions effectively” once the UK is no longer part of the EU system for designs.

Implications

• existing UCDs will continue to be valid in the remaining EU Member States;
• protection in the UK of existing UCDs in the UK will be provided for automatically with no action required by the rights holder; and
• provision will be made regarding the status of legal disputes involving UCDs that are ongoing before UK courts.

To access the Technical Notice in full, click here.