Brexit and design protection: Hobson’s Choice?

December 31st is the end of one of the most unusual years in modern history, but it also marks the end of the post-Brexit transition period.

In a coronavirus dominated society, it’s been easy to forget that Brexit has happened but, as the clock ticks down, the media’s attention is turning once again to the effects of Brexit that we will begin to experience from January 1st 2021 onwards.

In its own way, one of the most dramatic and far-reaching effects is going to be on design protection.

The EU’s Unregistered Community Design (UCD) right has provided benefit to UK designers since 2002 but, after 31st December 2020, designers could face a choice, depending on where, and how, they disclose the designs for the first time – unregistered design right in the UK and not in the EU, or protection in the EU and not in the UK. In other words, Hobson’s Choice.

A UCD right is not a monopoly right. In other words, it can only be used to prevent other people from copying a design, it cannot be used to stop someone from selling a product with a similar design if that design was created independently. For that, you need a design registration.

However, UCDs are enormously useful where budget is limited, or the lifespan of the design is short. UCD rights automatically come into existence when a design is disclosed to the public anywhere in the EU and provides protection against copying of the design in the EU for a period of three years. UCD’s can’t exist in designs that aren’t novel and first disclosures that take place outside the EU render designs as ‘old news’ and therefore falling short of the novelty requirement.

At the time of writing, from January 1st onwards, UK designers will no longer be entitled to UCDs if they make the first disclosure of their designs in the UK.  Conversely, they will not be entitled to equivalent rights in the UK if they make their first disclosures in the EU.

It is important to note that designs already protected by UCDs will continue to be protected in both the EU and the UK after December 31st and that the UK is modifying its protection for unregistered designs so that the same protection will be available in both jurisdictions.

It is important to note also that UK designers will also have the benefits of a different form of ‘unregistered design right’. UK unregistered design right has existed in the UK alongside UCD for many years and is slightly different in terms of what it protects and how long it lasts (fifteen years).

So, no one with rights will lose rights. The problem is going to be how to protect new designs in both the UK and the EU, rather than only in one or the other.

The best solution, of course, is to register designs in the UK and the EU from day one. However, this is not always practicable, and many designers simply do not have the available budget. Another option would be to try to achieve simultaneous disclosure in both the UK and the EU. However, we do not know if this will work, and it is also complicated by the fact that existing unregistered design right in the UK comes into effect from the date of creation, not the date of first disclosure, so care will be needed with every new design.

A more practical approach may be to rely initially on unregistered design right in either the home jurisdiction or the more important one (and arrange disclosure with this in mind) and then apply for design registration for any designs that turn out to be successful.

The UK and EU registered designs systems allow a twelve-month grace period from first disclosure before a design application has to be filed.  Also, design registration is relatively cheap these days, especially if you have several designs to register at the same time.

These changes have gone largely under the radar, and we think it is vitally important that designers understand what is about to happen and change how they do things accordingly.

Designers who, up to now, simply have relied on protection being there for them automatically need to know that this is not necessarily going to be the case in future, and designers who wouldn’t normally contemplate registering their designs need to know that design registration may be the only protection available to them in either the UK or the EU.

If you are a designer who wants to licence your designs to others, this is especially important.  Whereas, until now, you could create a design in the UK and licence it throughout the EU, in future, you may only be able to licence it in the UK – unless you can obtain protection in the EU as well, you will have nothing to licence there.

Victor Caddy is a Director and Trade Mark Attorney at Wynne-Jones IP. He can be contacted on [email protected].

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