Insight: Brexit – picking apart EU and UK unregistered designs

The United Kingdom is no longer part of the European Union, and as such the United Kingdom is no longer covered by Community Registered or Unregistered Designs. Designs are an important family of IP rights. Although they protect what products look like rather than how they work, some sort of design protection is likely to apply to almost any product, even those which are functional or have industrial uses. Freddie Noble, UK & European Patent Attorney at Albright IP explains further.

Registered designs

For registered designs, the position is reasonably straightforward. For protection in the EU you need an EU design and for protection in the UK you need a UK design. If you already had an EU design on 31^st December 2020 then you get, automatically and for free, a UK registered design as well. From now on, to get registered designs covering the UK and EU you need to file registrations in both countries. So far, not too complicated.

Unregistered designs

But unregistered designs are important as well. Although they only last for three years, unregistered designs arise automatically. Since a design can be for the appearance of part of a product, any given product is theoretically protected by an almost infinite number of unregistered designs. Even where registrations have been obtained, design owners frequently rely on their unregistered rights as well, since the pleaded unregistered design can be tailored after the event to focus on the parts which an infringer has copied, ignoring differences in other parts.

Community Unregistered Designs, like the registered ones, now no longer apply in the United Kingdom. However, the UK have introduced:

• a “Continuing Unregistered Design”, which in effect means that any Community Unregistered Design which existed already on 31^st December 2020 will continue to apply in the UK for the rest of its three-year term; and
• a “Supplementary Unregistered Design”, which applies to new designs disclosed on or after 1^st January 2021. The Supplementary Unregistered Design closely mirrors the Community Unregistered Design. This is in addition to UK “Design Right”, another unregistered right peculiar to the UK which predates the EU harmonisation of design law and which has been retained ever since.

So on the face of it, the approach is one of continuity. Before Brexit, we had Community Registered Designs, UK Registered Designs which were more or less the same as Community Registered Designs but with only national coverage, Community Unregistered Designs which were similar to Community Registered Designs but arose automatically and lasted for only three years, and UK Design Rights which were completely different. After Brexit we have UK Registered Designs which are more or less the same as Community Registered Designs but apply to the UK, Continuing or Supplementary Unregistered Designs which are more or less the same as Community Unregistered Designs but apply to the UK, and UK Design Rights which are still completely different.

 

But what actually is the law?

However, there is a catch. This is because the EU Regulation has never been clear as to whether Community Unregistered Designs can arise if a design is first disclosed outside of the EU. Although national courts, notably in Germany and the UK, have grappled with the issue, there has never been a clarification at EU level. The Intellectual Property Enterprise Court in Beverly Hills Teddy Bear Company v PMS International¹ actually referred the question to the Court of Justice of the European Union (CJEU) just before the UK left the EU, but the case has since settled and so the CJEU will not now give an answer on that reference.

The UK Government seems to recognise this uncertainty, since advice on the UKIPO website says (my emphasis added):

“first disclosure in the UK may not establish UCD and could destroy the novelty in that design…you should check guidance from the EU Intellectual Property Office on this”

The guidance on the EUIPO website appears to support the view that first disclosure in the UK (or anywhere else outside the EU) will not establish UCD. However, guidance on government websites does not have the force of law in the UK or in the EU. Rely on it at your peril.

The UKIPO seems to think though that it can be unequivocal as to the new Supplementary Unregistered Design (SUD) (my emphasis again):

“First disclosure in the EU will not establish SUD. However, it may destroy the novelty in that design, should you later seek to claim UK unregistered rights.”

Reading the Government’s website, you might think that in the process of amending the EU law to bring it into UK domestic law post-Brexit they had taken the time to clear up the uncertainty. Alas, the amendments made to the EU Regulation in the inelegantly-titled “The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019” do no such thing². Put shortly, UK law on Supplementary Unregistered Designs is exactly the same as EU law on Community Unregistered Designs, and that includes all the badly-drafted and confusing bits of the law which have more than one possible interpretation.

Place your bets…

At some point the EU and UK courts will have to decide what it all means³, and there is now no guarantee that courts in those different jurisdictions will come to the same conclusion. On the face of it inconsistent interpretations would create a very non-level playing field in one direction or the other, and ideally ought to be followed up with diplomatic and legislative action to resolve the inconsistency.

Loss of EU unregistered rights might be mitigated to some extent by an increasingly wide scope given to copyright law by the EU courts, an approach which seems to me unlikely to be followed by the UK. That’s a whole other story.

So what to do?

For now, what are designers to do? Here is our advice:

• Register designs in both EU and UK, and consider registering more designs to cover parts of products as well as the whole thing; this will help to mitigate potential loss of unregistered rights in some jurisdictions.
• Consider trying to make the design available to the public in the EU at exactly the same time as it is made available to the public in the UK; disclosing first on the internet is one possible way of doing this, though by no means one which will certainly succeed.
• Don’t take the UKIPO guidance as an authoritative statement of the law. Recognise the uncertainty – for a product first disclosed outside the UK you may or may not have Supplementary Unregistered Designs, but know that you can argue it.

1) [2019] EWHC 2419 (IPEC)
2) Indeed, the government does not have the power to make regulations to clarify unclear EU law. Amendments can only be made for the purposes set out in s. 8 of the European Union (Withdrawal) Act 2018
3) Though it is remarkable that we have come this far, on a regulation from 2002, without the question being referred to the CJEU; perhaps we will all just live with not knowing what the law is for another 19 years