In the EU, a designer is able to benefit from both unregistered and registered design rights. Although cheap and easy to obtain, many designers have chosen to rely on registered designs only for the more important designs/products and fall back on unregistered rights for the rest. However, that may not be possible in certain situations as of 1 January 2021. In view of uncertainties ahead, we strongly recommend filing for registered design protection for any commercially important products.
As of 1 January 2021, the Brexit transition period comes to an end and the United Kingdom becomes independent of the EU. It has recently become clear that as of this date, there will not be reciprocal protection between the United Kingdom and the European Union for unregistered Community designs and their UK equivalent. As a result, it at present appears is only possible to have this unregistered design protection in either the UK or the EU. For companies that have interest in having design protection in both the EU and the UK, there is therefore value in applying to register a design and avoiding this messy situation.
Unregistered Community Designs up until the end of 2020
Unregistered Community designs can in certain circumstances provide protection for the appearance of the whole or part of a product for three years following its first being made available to the public within the EU.Up until the end of 2020, this would include the UK.
Unregistered Designs From January 2021
From January 2021, EU and UK rights split. New unregistered Community designs after that point will not cover the UK, and there will be a new UK right (supplementary unregistered design) which will cover the UK but not the EU.
However, although not a settled matter of EU law, it is possible that the UK and EU rights will be mutually exclusive, depending on the location of first disclosure.
From January therefore, companies would do well to carefully consider the location of first disclosure as this may affect whether they have UK or EU protection under this system.
As a solution to avoid potentially having to choose between the UK and EU, it is possible to apply to register a design in both the UK and the EU.
This would require some small investment as, unlike unregistered designs, to apply for registered design protection formal applications would have to be filed in both regions. Nevertheless, registered design applications are not expensive and offer many further advantages over relying on unregistered protection, including increased duration of protection (up to 25 years instead of 3), being recorded on an official register, and infringement not requiring proof of copying.
Please contact us if you would like to discuss your strategy for trying to maximise the protection of your designs in the UK and EU.