As from the end of 2020, registered designs in the European Union will no longer be protected in the United Kingdom. The UK will be establishing a comparable design right for all holders of existing registered designs. There will be no changes to protection in other EU member states, such as France or Germany, and British businesses and individuals will still be able to apply for EU designs, although they will in future need to appoint a European Design Rights attorney with an office in the European Union to represent them.
Receiving a comparable Design Right.
The UK Intellectual Property Office will create for every registered European design right a comparable design right which will be recorded on the UK design right register. It will have the same legal status as national UK design rights and will keep the original European filing dates.
This process will happen automatically. There will be no fees payable and there will be no need to go through a seperate registration process in the UK
Pending European design right applications
Pending design rights applications in Europe – including those with deferred publication – will not be automatically converted into a pending British registration. However, it will be possible to apply to register a national design right in the UK up to 30 September 2021 based on the original EU design right for the same goods and services. The applicants will have to pay the national fees.
Unregistered Design Rights
The UK will also be establishing a new UK unregistered design right called “supplementary unregistered design” (SUD). This right will ensure that the full range of design protection provided in the UK before 1 January 2021 will remain available.
The terms of SUD protection will be similar to those already conferred by unregistered design right in the European Union. However, the protection it provides will only be in the UK and will not extend to the EU. Similarly, future European Union unregistered design rights will not be valid in the UK
The British SUD will mirror the European Union system by providing UK protection for both three and two-dimensional designs for a period of three years. The right will be subject to interpretation by the UK Courts.
Opting Out
It will be possible to “opt-out” of the creation of the national design right. This needs to be done by filing a request with the UK Intellectual Property Office after 1 January 2021.
Renewals
In the future, it will be necessary to pay for renewing BOTH the UK and the EU design rights separately. We shall continue to send renewal reminders for both the existing EU design rights and the new UK design rights to our clients in good time.
Please take care when responding to any renewal letters that these come from a recognized source. A number of holders of design rights and other IP rights, such as patents and trademarks, have received letters from companies with names similar to intellectual property offices offering to renew their intellectual property rights.
Representation
The UK Intellectual Property Office will currently allow the existing European Design Right Attorneys to continue to be listed as the representatives for the new British design right. Our Munich and Paris offices will continue to be listed initially as the addresses for service and there will be no need to select a new representative. We shall change the address to service to our new London office in good time.
[Photo: Ivan Mark / Stockfoto / Shutterstock.com]
