On 24 September 2018 the UK government published a note outlining the effect of a no-deal Brexit on registered and unregistered Community designs in the UK. The note, which can be read in full here is meant as guidance and is not statutory legislation.

The content of the note does not differ substantially from that which was published in the “Draft Agreement” on the withdrawal of the UK from the EU earlier this year. You can see our full report on what was published in the Draft Agreement here.

Registered Community Designs

Rights holders with existing registered Community designs will be granted an equivalent UK right which will be available from the date of the UK’s exit from the EU. It is not necessary for rights holders to apply for this equivalent UK right as it will be granted automatically at the point of the UK’s exit from the EU and notification of the right will be sent to the rights holder. If a rights holder does not want to obtain the UK right, it is possible to opt out of receiving it.

The equivalent UK right will be a separate right from the registered Community design right (as the UK will no longer be a member of the Community). It would therefore need to be assigned or licensed independently from the registered Community design right in any related assignment or licensing agreements. It is also recommended that existing licences and other agreements are reviewed on this basis.

Registered Community Design Applications

No UK equivalent right will be created automatically for design applications which are pending on the date of the UK’s exit from the EU. To benefit from registered design protection in the UK it will be necessary to refile the design as a separate UK application within 9 months of the exit date. The government will recognise the earlier filing date and also any priority date but rights holders will have to meet the cost of filing this separate application.

Unregistered Designs

The government will ensure that all unregistered Community designs which 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, a new unregistered design right will be created in the UK which will mirror the unregistered Community design right. This means that designs disclosed after the exit date will enjoy protection from this new UK right under the same terms as the existing registered Community design right. The government have coined this new right the “supplementary unregistered design right”.

The currently existing UK unregistered design right will continue to operate as normal, with the legislation amended to ensure that it functions effectively once the UK is no longer part of the EU system for designs.

What do we still need to know?

The note is informative but still leaves many questions unanswered. Particularly, as we reported after the publication of the Draft Agreement, in the event of a no-deal Brexit, it still remains to be seen whether designs first disclosed in the UK (which will be outside the EU) will enjoy unregistered Community design protection in the EU, or whether designs first disclosed in the EU will enjoy supplementary unregistered protection in the UK.