As the end of the Brexit Transition Period nears, both the European Commission (EC) and UK Intellectual Property Office (UKIPO) have released stakeholder notices in relation to the treatment of Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) from 1 January 2021. In this post, we outline the key points from these notices. We also provide some practical points for UK businesses to ensure that their designs are best protected post 1 January 2021.

EC Notice

Key Points:

• Any registered RCD will no longer cover the UK.
• Any application for a RCD which is still pending at 1 January 2021 will no longer cover the UK if granted.
• RCD rights will be governed by the EU Member State in which the RCD owner has a real or effective establishment. If the RCD owner is domiciled in the EU without a real or effective establishment in an EU Member State, then Spanish law will apply.
• Professional representatives before EUIPO for RCDs can now only be professional representatives qualified in an EEA state, with their principal place of business in the EEA.
• UCDs made available to the public in the manner provided for in EU law will only be valid and have effect in the EU Member States.

UKIPO Notices

Registered Designs

Key Points:

• On 1 January 2021 a comparable UK re-registered design right (UKRRD) will automatically be granted by the UKIPO for each RCD. This new UKRRD will then be treated as if it was applied for and registered under UK law. It may be challenged, assigned, licensed or renewed separately from the original RCD. This registration is free but no registration certificate will be issued.
• Applicants of RCDs can retain their priority date (ie earlier EUIPO filing date) for the corresponding UKRRD application if they apply to UKIPO within the 9 month period following the end of the transition period. The usual UK design application fees will apply.
• A RCD whose publication is deferred on 31 December 2020 will be treated as being equivalent to a pending application. The publication of a RCD may be deferred at EUIPO for up to 30 months.
• Owners of the new UKRRD rights do not need a UK correspondence address until 31 December 2023.
• RCD holders can opt out of being granted a comparable UKRRD as long as the RCD holder has not assigned, licensed or entered into an agreement in relation to the re-registered design or launched proceedings based upon it.

Unregistered Designs

Key Points:

• On 1 January 2021 designs that are protected in the UK as a UCD will be automatically protected as a UK Continuing Unregistered Design (UKCUD) for the remainder of the 3 year term attached to it.
• From 1 January 2021, there will be a ‘supplementary unregistered design right’ which will provide post-exit UK protection for both three-dimensional and two-dimensional designs that would have otherwise enjoyed protection under the UCD regime.

Key takeaways for UK businesses

• Depending on how you manage your design portfolio, you may need to appoint new design attorneys based in an EEA country to look after the EU aspects of your design mark portfolio (if we can be of assistance in this regard, please let us know).
• Where possible, ensure that pending RCD applications are prosecuted as quickly as possible (so that a comparable UKRRD is granted on 1 January 2021 rather than the right for a UKRRD application).
• If pending RCD invalidity actions before EUIPO are based solely on UK rights, consider re-filing them based on EU rights.
• Consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU.
• Review unregistered design protection and consider whether to launch designs comprising surface decoration in the UK so as to take advantage of the supplementary unregistered design right.

Thank you very much to Emily Costello for her research assistance in preparing this post.