Unregistered Design Rights in a post-Brexit world

In terms of Brexit, the UK is currently within the transition period until 31 December 2020 – and until this date all EU intellectual property laws and decisions of the CJEU will continue to apply.

This will change on 1 January 2021 – and a lot of IP rights holders fill potentially find themselves in a challenging position.

There will be a few changes to the IP regime, and one of these changes concern the unregistered design rights: after the end of the transition period, designs first disclosed in the UK will no longer be eligible for the EU unregistered design protection, and vice versa.

The EU unregistered design right (UCD) protects the appearance of the product (so long as the design features are new and have an individual character) and lasts for 3 years from the date that the design was disclosed to the public.

The disclosure of a design can happen via advertising it on a website, selling it in the store (if it was not disclosed earlier), showing it on the runway or presenting it in the catalogue.

Before Brexit, the disclosure of the design could take place in any EU country – including the UK – which gave rise to automatic EU UCD protection. However, going forward the design disclosure in the UK will not lead to the EU UCD right – which means that brands will now have to think carefully where they first disclose their designs and where they require protection the most – in the UK or the EU.

One of the strategies adopted by brands is to try and achieve simultaneous disclosure of their designs in the UK and the EU – by for example live streaming of the runway show. However, this approach is yet to be tested in courts – and it will be ultimately for the courts to decide whether the online simultaneous disclosure will result in design protection in different territories.

This will have a particular impact on fashion and other seasonal industries, where obtaining registered designs for each product can seem impractical and the brands heavily rely on the unregistered design rights in relation to the majority of their products.

There are other rights to fall back on in this scenario, such as registered designs and copyright, and Briffa, being expert in all aspects intellectual property law and practice, will be happy to help you put a IP protection strategy in place. If you would like to discuss protection of your designs or any other aspect of IP assets you might have and how to go about protecting them, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.

Written by Anastasia Troshkova, Solicitor