Protecting design post-Brexit – some small steps in the right direction?

On 19 March 2018 the European Commission published an updated version of the “Draft Agreement” on the withdrawal of the UK from the EU – see https://ec.europa.eu/commission/sites/beta-political/files/draft_agreement_coloured.pdf.

The draft is helpfully colour coded with terms that have been agreed by the negotiators (subject only to technical legal revisions) shown in green.

Amongst other areas, the Draft Agreement addresses intellectual property rights in Title IV, and design rights as part of that. With regard to design rights, a number of issues have been “agreed”, although it should be kept in mind that nothing is binding unless and until a final Withdrawal Agreement is actually entered into by both the UK and EU.

As widely expected, the holder of a registered Community design (RCD) registered or granted before the end of the transition period (i.e. at least before 31 December 2020) will automatically become the holder of a registered design right in the UK for the same design. The term of protection for this new UK registered design will be at least equal to the remaining term of the corresponding RCD, and the new UK registered design shall enjoy the same date of filing and date of priority as the corresponding RCD.

This will provide some comfort to the majority of designers/companies who have continued to protect their designs by filing for RCDs, rather than taking the more conservative (and expensive) approach of double filing for both RCDs and UK registered designs simultaneously (although that will of course become a necessary practice for most after the end of the transition period).

With regard to the unregistered Community design (UCD), it has been agreed that the owner of a UCD arising before the end of the transition period shall become the holder of an “enforceable intellectual property right in the UK… affording the same level of protection” as that provided to the UCD. The term of protection for this new UK right shall be at least equal to that remaining for the corresponding UCD.

The fact that negotiators have agreed to this suggests that the UK is willing to recognise a new type of UK unregistered design right – i.e. one that mirrors the scope of the UCD (the existing UK unregistered design right does not afford the holder the same level of protection as the UCD). This is good news for designers and provides some certainty, at least in the short term, for companies/designers who habitually rely on UCD protection (e.g. those in the fashion industry): designs already protected by UCD at the end of the transition period will continue to enjoy that same protection both in the EU and UK for whatever is left of their 3 year term.

But it does not answer the larger questions that have plagued design-reliant industries about the status/scope of unregistered design protection after the end of the transition period, such as whether designs first disclosed in the UK (which will be outside the EU) will enjoy UCD protection in the EU, or whether designs from the EU will enjoy unregistered protection in the UK.

Plainly, there is still much to be done.

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