The UK has left the European Union and is currently in a transition period which ends on 31 December 2020. The end of the transition period will have an impact on the protection provided by unregistered designs rights in both the EU and UK.

An unregistered designs right is an automatic right which protect aspects of the design or look of a product. Many companies are unaware of these rights until they need to enforce them against infringers. There are currently two types of unregistered design right which provide protection in the UK and EU. However, the rules on whether designs qualify for these rights will change on 1 January 2021, and this will, unfortunately, have a negative impact on the protection available.

POSITION UNTIL 31 DECEMBER 2020

In the UK, the design of a product may be protected by both UK unregistered design right (UDR) and EU unregistered community design right (UCD). The two rights provide different scope and duration of protection.

UK unregistered design provides protection in the UK for the shape and configuration of a design and is available for 10 or 15 years. This right has qualifying provisions and is available to individuals or companies based in the UK, EU and several other countries, including Hong Kong and New Zealand.

The EU unregistered community design right (UCD) provides broader protection than a UK unregistered design, as it protects aspects of surface decoration, as well as shape, and is not restricted by a qualifying provision. It has a duration of three years from the date on which the design was first made available to the public within the European community. Currently, an EU unregistered design gives protection in the UK by virtue of the UK’s recent EU membership.

Until the end of the transition period, EU community unregistered design right will arise for products first launched in either the EU or UK, and the right will cover both the EU and UK. During this period, UK unregistered design right will be available for both UK and EU- based individuals and companies. However, this situation will change from 1 January 2021.

POSITION AFTER 1 JANUARY 2021

Once the transition period has ended, the criteria for protection from both UDR and UCD will change.

The qualifying rules for UK unregistered design rights will now no longer include EU based individuals and companies. Thus, only individuals and companies based in UK and a few other non-EU countries will be able to benefit from this right.

From 1 January 2021, the EU unregistered community design right (UCD) will no longer cover the UK. The UK is creating two new rights to provide replacement protection in the UK. Firstly, continuing unregistered design right (CUD) will give protection in the UK for designs that were protected as a UCD prior to 1 January 2021, even if the first disclosure was in an EU27 country (i.e. EU member states excluding UK). Secondly, a supplementary unregistered design (SUD) will provide protection in the UK for designs launched in the UK after 1 January 2021. Both new rights will have a three-year term and give similar protection to the UCD, including aspects of surface decoration as well as shape. These new design rights have the advantage of proving broader protection than the UK unregistered design right and being available for individuals and companies who do not meet the qualifying criteria for UK unregistered design right (UDR).

In Europe, EU unregistered community design right (UCD) will be available for products launched in EU27 countries. A product launched in the UK after 1 January 2021 will not be eligible for UCD.

The new system has the disadvantage that it does not provide simultaneous protection in both the UK and EU27. Whether a product qualifies for UCD in EU27 or SUD in UK will depend on where it is launched. For example, a product launched in Berlin will qualify for UCD protection in EU27 but not UK; likewise, a product launched in London will qualify for SUD protection in UK but not EU27.

RECOMMENDATIONS

Once the Brexit transition has finished, companies will need to think carefully about how they effectively protect their designs in the EU and UK. A good way of ensuring that designs are protected in both territories is to file registered design applications. These could be filed in both EU27 and UK, or alternatively just in the territory where there are no unregistered design rights.

When launching a new product, it is important to consider carefully consider the location, as the place of first disclosure (i.e. EU27 or UK) will dictate which unregistered design rights are available. Launching a new product simultaneously in the EU27 and UK may attract both EU and UK unregistered design protection, although this has not yet been tested in court.

This article is for information only and should not be taken as legal advice. Should you have questions about unregistered design rights, or other designs matters, please contact our designs team.