Brexit Intellectual Property & No Deal

THE B-WORD, INTELLECTUAL PROPERTY AND NO DEAL!

In a continuing world of confusion and uncertainty, the Government has recently updated interested parties on design, design rights and international design and trade marks and has set out the changes they are making to UK law in the event of no deal.

UK designers and manufacturers will be better armed if they understand some of the changes so that contingency plans can be created and put in place to mitigate any unexpected consequences and to ensure continuing IP Protection.

Government consistently assure us that leaving the EU with a deal remains the government’s top priority and that this position remains unchanged. However, they say, “A responsible government must plan for every eventuality, including a no deal scenario”. Their advice will cover the impact on UK right holders, businesses, and other organisations. Information relating to registered Community designs and international trade mark and design rights will be published in the future.

Registered community designs (RCDs), unregistered community designs (UCDs), and protected international trade mark and design registrations designating the EU will no longer be valid in the UK. On exit day, these rights will be immediately and automatically replaced by UK rights. If you own an existing right, you do not need to do anything at this stage.

Currently:

Designs – Design protection can be obtained via a registered right or an unregistered right. In the UK, registered protection can currently be obtained in the following ways:

  • a national registered design granted by the Intellectual Property Office of the UK (IPO)
  • a registered community design (RCD) granted by the EU Intellectual Property Office (EUIPO)
  • an international registration designating either the UK or the EU, filed under the Hague Agreement at the World Intellectual Property Organization (WIPO)
    Unregistered protection can be obtained in the UK through the UK design right and the EU unregistered community design (UCD).

Trade marks are registered rights, with protection in the UK granted by the Intellectual Property Office (IPO), the EUIPO, or via an international registration filed under the Madrid Protocol at WIPO.

Post Brexit
After Brexit, any existing RCDs, UCDs, European Union Trade Marks (EUTM), and International (EU) Designs and Trade Marks will only cover the remaining EU Member States. They will no longer provide protection in the UK. Designers will also still be able to establish unregistered design protection in both the EU and the UK but separately. However, the Government will also provide holders of RCDs, UCDs, and protected international design and trade mark registrations designating the EU with equivalent rights on exit day.

Changes
Whilst new Designs and Trade Marks can be registered in the UK, from the date we may leave with no deal it will be necessary to apply to the European Intellectual Property Office for protection in EU27 by separate application. In the event of Brexit without a withdrawal agreement, all existing RCDs, UCDs, EUTMs and international design and trade mark registrations designating the EU will no longer provide protection in the UK.

Watchpoints for UK designers
Currently, the majority of UK designers rely on unregistered EU and UK design rights. Unregistered design rights arise automatically and last for 3 years.  An unregistered EU design protects the shape, colour, contours, lines, ornamentation, texture and shape. A UK unregistered design protects the shape and configuration of a design for 10 years after it was sold or 15 years after it was created, whichever is earliest.

Post Brexit, interestingly, deal or no deal, UK designers will no longer have EU unregistered design protection in EU27. The Government have gone some way to addressing this with the promise of the introduction of a supplementary unregistered design right which will mirror the broader EU protection, but this will only offer protection I the UK. Despite repeated and consistent request to Government, there has been no leadership or advice on this anomaly and designers have been asked to seek guidance from IP lawyers.

In a nutshell, unless there is simultaneous publication of an unregistered design in both UK and EU, EU27 protection for unregistered designs will not be available. A key benefit of ACID membership is access to our legal affiliates all of whom are experts in design and trade mark law so, if you are an ACID member, in the absence of Government advice, they are an excellent resource.

Full Government advice is available on: How UK design and international design and trade mark law currently works, changes to UK design and trade mark law, creation of a registered design, pending applications, details of how to opt out, renewals and restoration, Designs which expire after exit day Designs which expire before exit day, RCD registrations and applications reinstated after exit day, deferred publication and where publication of the RCD is deferred at EUIPO and many other design and trade marks related issues are available in the latest advice, so please refer to http://bit.ly/2mSgZtM