IPAN has sought clarification on what happens to various design rights in the event of a no-deal Exit from the EU from the the UK Intellectual Property Office (IPO). In response, the UK IPO has providing the following clarification, further to their no-deal scenario guidance released earlier this year. Here is what they said:
Registered Community Design:
- A right holder with an existing registered Community design will have a new UK equivalent right.
- This new equivalent right will come into force upon Exit, with minimal administrative burden on the right holder.
- The new equivalent UK registered design will be treated as if it had been applied for and registered under UK law.
- So it will be subject to renewal in the UK, will be litigated at the UK Courts and the IPO tribunal, and can (if desired) be assigned and licensed independently from the remaining EU registered right.
- The remaining EU registered right will not cover the UK, but it will continue to cover the remaining EU 27 countries.
- For registered Community design applications which are pending before the EUIPO on Exit day, the applicant will be able to refile with the IPO for the UK equivalent right. They will use the normal application process for registered designs in the UK.
- For new registered design applications made after Exit, separate applications will be needed for a UK right and for an EU right.
Unregistered Community Design (UCD):
- A right holder with a UCD in existence before Exit will continue to have protection in the UK (for the duration of their UCD) via a “continuing UCD” right. This will have the characteristics of the existing UCD.
- For designs disclosed after Exit, a new form of unregistered design right – the “supplementary unregistered design right” – will be introduced into UK law, which mirrors the scope and duration of the UCD.
- So, after Exit, where first disclosure of a design takes place in the UK, this may give rise to the current, existing UK design right and/or the supplementary unregistered design right.
- The EU has indicated in their Brexit Q&A document that, unless other agreement is reached, disclosure in the UK after exit will not give rise to a UCD in the EU27 (since there is no deal in place).
- After Exit, where first disclosure of a design takes place in the EU27 this will result in a UCD. This will not extend to the UK. There is no requirement for the person to be an EU national.
- We understand some design companies are considering simultaneous disclosure of their designs in the UK and the EU so that they acquire both the EU27’s UCD and the UK’s supplementary unregistered design right. The example mentioned was a show at a London fashion event being live-streamed to an event in Milan.