The impact of Brexit on designs05 Jun 2016
The decision of the UK to leave the EU will clearly have wide reaching implications across business and legal affairs. The field of IP will be particularly affected given that IP rights in the UK are all to some extent influenced by European law.
In the short-term there will not be an immediate change to the legal framework. The UK will remain a member state whilst the withdrawal negotiations and arrangements are put in place over the next couple of years. We would stress that all clients’ rights will continue to be protectable and should be enforced where appropriate.
Under the current system, an applicant can, through one application, protect a design throughout the European Community by obtaining a Community Registered Design. In going forward, unless the UK specifically remains a part of the regime, an applicant will have to register a UK Registered Design in addition to any Community Registered Design.
But what about those who have already got a Community Registered Design? Will these registrations continue to offer protection in the UK?
At this stage we cannot be sure what will happen. One possibility is that measures will be put in place to allow the conversion of these registrations into separate UK rights, so that protection is not lost and the original priority date is retained. Alternatively, a grandfather provision may provide that existing registrations are fully protected. We would expect this to be the most likely outcome.
There are also implications in respect of designs that are protected through Unregistered Community Design Right.
Currently this right arises automatically (without the need for registration) as a result of the fact that products incorporating the design are made available to the public within the EU. It gives protection for 3 years from the date the design was first made available. One of the advantages of this right is that owners can apply for pan-European relief if the design is infringed.
Once we have left the EU, it is likely that UK businesses and individuals will no longer be able to rely on this right. It is conceivable that a specific UK right will be brought in, in view of the overlap with registered designs.
They will still be able to rely on UK unregistered design right which provides protection for 10 years from the date of first sale. However, the two rights are not identical – UK design right is narrower in scope, which means for example the protection of surface decoration is excluded.
There are existing provisions in UK legislation by which design right is extended abroad to “qualifying countries”. A qualifying country includes any EU Member State, the Channel Islands, the Isle of Man, any UK colony and countries that have been designated as qualifying for reciprocal protection (commonwealth countries such as Bermuda, Cayman Islands, Gibraltar etc). As these provisions are in UK statute (CDPA 1988), once the UK leaves the EU, Member States would continue to have the same reciprocal protection.
It is important for businesses to seek legal advice so that they are able to prepare and minimise any impact. For further advice please contact any member of our IP team on 0161 838 7816.