Changes to Design Rights post Brexit

The first day of 2021 signalled the end of the Brexit transition period. On this day, also known as IP completion day, a number of changes to intellectual property laws were introduced. One of the most significant adjustments is to design law.

Registered Designs

Pre-Brexit, designers could protect their rights by registering their work with the European Union Intellectual Property Office (EUIPO) and obtaining a Registered Community Design (RCD). RCDs provide EU protection to the appearance of a product or part of a product. Now the transition period has ended, they are no longer recognised in the UK. However, legislation is in place to prevent existing RCD holders from being negatively affected. It is worth noting that under UK legislation, there is already provision for designers to obtain a UK registered design right under the Registered Designs Act 1949.

Any existing RCDs that were in place before 11.00 p.m. on 31 December 2020 automatically became protected, re-registered designs under new UK law. These designs have the same application, registration and priority dates as the EU RCD.

RCD applications that were pending as of 1 January 2021 should be filed for UK registration by 30 September 2021 if they want to keep the earlier filing date of the RCD.

Going forward, designers that need both UK- and EU-wide design protection will need to file two separate applications: one for an RCD and one for a UK design right. Under UK law, designers can secure a UK-registered design right under the Registered Designs Act 1949. This means their designs will be protected across the country.

Unregistered Designs

The UK Unregistered Design Right (UKURD), which was introduced in the Copyright, Designs and Patents Act 1988, differs slightly from the EU’s Unregistered Community Design (UCD). The UKURD protects the shape or configuration (excluding surface decoration) of a whole product or component of it for a set period, which is typically 10 years. Any UKURDs established anywhere within the EU before the end of the transition period will continue to be protected.

A UCD, on the other hand, protects the appearance of all or part of a product for three years. It focuses on aesthetics including the lines, contours and colours, and aspects like shape, texture and/or materials of the product itself/its decoration.

From 1 January 2021, designs must now be disclosed in the UK (or another qualifying country) first in order to be protected by UKURD.

To make sure designs continue to be protected, the UK has introduced two new unregistered design rights:

• Continuing unregistered design (CUD)
• Supplementary unregistered design (SUD)

Both rights effectively mirror the UCD regime. A CUD will apply to any design considered a UCD before IP completion day, which would have lost its protection in the UK after the end of the transition period. The SUD, meanwhile, will replace the UCD in the UK. A design will only be protected under SUD rights if its first disclosure is within the UK (or another qualifying country). 

Key Considerations for businesses

• Businesses that rely on RCDs will need to make two applications for new registered designs, in both the UK and the EU. They will also need to pay a fee for the renewal of registered design rights to both the EUIPO and the IPO.
• If a business is relying on UCDs, it will need to carefully consider where its design is first disclosed. For SUD (or UKURD), the design will need to be disclosed first in the UK, while a UCD disclosure should be made within the EU.
• UK courts will interpret the rights established under the new UK design regime. While design rights are largely unchanged for the time being, the scope of protection offered by UK and EU design right legislation could change in the future.