Following the UK’s exit from the EU on 31 January 2020, the UK entered a transition period during which time most EU law will continue to apply in the UK. Under the terms of the UK-EU Withdrawal Agreement, the transition period is due to expire on 31 December 2020, but it remains to be seen whether the transition period will be extended due to the COVID-19 pandemic.
The Withdrawal Agreement includes a section setting out details of changes to the law that will affect intellectual property rights in the UK.
In this guide, we focus on how registered Community designs (RCDs) will be impacted by changes in the law during the transition period and beyond.
- What is the Designs and International Trade Marks Amendment?
- What will happen to your existing RCDs during the Brexit transition period?
- What if you have an application pending for an RCD at the end of the Brexit transition period?
- Will there be a new application process for registered design rights following the transition period?
- How will the UK registered design numbering system change?
- What about renewals of RCDs?
- Designs with an expiry date in the 6 months’ after 1 January 2021
- Designs which expired in the 6 months before 1 January 2021
- Will the EU registered design invalidity proceedings still stand?
- Will Customs Applications for Action (AFAs) remain during the Brexit transition period?
- Next steps – quick reference table
What is the Designs and International Trade Marks Amendment?
The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (the Regulations) have been introduced to implement changes to existing design rights law in the UK, in accordance with the terms of the Withdrawal Agreement.
The Regulations create new standalone UK rights which will exist separately from EU rights to ensure the continued protection of intellectual property rights, where relevant, and make administrative changes to the existing law required to implement the new rights.
The Regulations also set out information regarding the treatment of specific intellectual property rights – for example, how RCD applications will be treated if they are still pending at the end of the transition period, and how renewal will be managed of those RCDs due to expire shortly after the end of the transition period.
What will happen to your existing RCDs during the Brexit transition period?
During the transition period, the majority of EU law will continue to apply in the UK, including the EU law that governs RCDs and so there will be no change to the status of existing RCDs during the transition period.
However, following the end of the transition period, RCDs will no longer be valid in the UK. All RCDs registered and published before the end of the transition period will be automatically replaced with comparable registered design rights in the UK. These will be known as ‘re-registered designs’. From 1 January 2021, any existing RCDs will only cover the remaining EU member states.
The re-registered designs will retain the registration or priority date of the relevant corresponding RCD.
What if you have an application pending for an RCD at the end of the Brexit transition period?
If you have an application pending for an RCD on 1 January 2021, you may apply to the UK Intellectual Property Office (UK IPO) for a UK registration of the same design within 9 months of 1 January 2021.
Applicants will retain the earlier filing date of the pending RCD application. However, the UK application must relate to the same design as the earlier RCD application. If the details of the UK application are different to those in the earlier RCD application, the benefit of the earlier EU filing date will be lost.
Will there be a new application process for registered design rights following the transition period?
The UK IPO’s application forms will be amended to include a new section for those applicants claiming the earlier filing date of the corresponding RCD application, as described above. These applications will be treated as a normal UK registered design application.
Following the end of the transition period, if design protection is required in the remaining EU states as well as the UK, two separate applications will need to be filed, one with the EUIPO and one with the UK IPO.
How will the UK registered design numbering system change?
The number allocated to the re-registered design will consist of the full RCD number prefixed with the digit ‘9’. For example, an RCD with the number 004048098-0004 will become re-registered UK design number 90040480980004.
What about renewals of RCDs?
Right owners will be required to pay separate renewal fees in respect of re-registered designs and any corresponding RCDs that have been retained to protect rights in the remaining EU countries. Fees will need to be paid separately to the UK IPO and the EUIPO.
Re-registered designs will hold the relevant renewal date of the corresponding RCD.
The UK IPO sends renewal reminders to all UK registered design owners in advance of the relevant design’s expiry date. This will continue to be the case for all re-registered designs with renewal dates which fall more than 6 months after the end of the transition period. However, where the re-registered design expires in the 6 months immediately following 1 January 2021, a new process will be followed.
Designs with an expiry date in the 6 months’ after 1 January 2021
Right holders will be sent a renewal notice on the expiry date of the design or as soon as possible thereafter. The notice will state that the re-registered design has expired, and that they have 6 months from the date of the renewal notice to renew.
The UK IPO will be unable to send advance reminder notices for those re-registered designs created on 1 January 2021 due to expire in the period immediately following the transition period, as the re-registered design will not yet exist at the time the renewal would normally be sent. As such, for any right due to expire in the 3 months immediately after 1 January 2021, the UK IPO will send a renewal notice and allow the right holder 6 months to renew from the date of the renewal notice, without paying a late renewal fee.
Those with re-registered designs due to expire in the fourth, fifth or sixth month after 1 January 2021 will receive the standard advance renewal notice.
Early payment of a renewal fee to the EUIPO on a date prior to 1 January 2021, where an RCD’s renewal date falls after 1 January 2021, will have no effect in respect of any re-registered design. Any re-registered design with a renewal date after 1 January 2021 will be subject to a UK renewal action and fee.
Where the re-registered design is not renewed, it will be removed from the UK register. Re-registered designs may be restored at a later date in accordance with applicable law.
Designs which expired in the 6 months before 1 January 2021
Re-registered designs will be automatically created in the UK for any RCD which:
- Expired in the 6 months before 1 January 2021
- Has not been late-renewed with the EUIPO but is still within its 6 month late-renewal grace period on 1 January 2021.
Any such re-registered designs will be given an ‘expired’ status and the rights owner will need to late-renew the corresponding RCD with the EUIPO if they wish to retain the UK re-registered design. This late renewal will automatically apply to the ‘expired’ re-registered design. If the RCD is not late renewed with the EUIPO, the re-registered design will be removed from the UK register at the end of the RCD’s late renewal grace period.
Will the EU registered design invalidity proceedings still stand?
If an RCD is declared invalid in the EU as the result of proceedings that were on-going on the last day of the transition period, the corresponding right in the UK will also be declared invalid. However, where the relevant ground for invalidity does not apply in the UK, the UK is not obliged to declare the corresponding UK right invalid.
Will Customs Applications for Action (AFAs) remain during the Brexit transition period?
AFAs are governed by the EU Customs Regulation and this regulation will continue to apply in the UK during the transition period. As such, AFAs granted prior to the expiry of the transition period will remain valid in both the UK and the remaining EU states during the transition period.
However, AFAs previously granted in the UK and EU will fall away and have no effect following the expiry of the transition period. As such, prior to the expiry of the transition period, right holders should seek to file ‘Union’ AFAs in the relevant member state, as well as a separate ‘national’ AFA in the UK.
Next steps – quick reference table
Whether you are required to take any action to ensure the continued protection of your design will depend on the status of your RCD at the end of the transition period.
Please refer to the quick reference table below to assess what next steps you may need to take.
|Status of your RCD on 1 January 2021||Action*|
|RCD application pending||Apply for a UK registration of the same design within 9 months of 1 January 2021 to retain earlier filing date of the pending RCD application|
|Registered and published (and not expired or due to expire in the 6 months’ after 1 January 2021)||No action required – RCD will be automatically replaced with a UK right (re-registered design) on 1 January 2021|
|Registered and published but due to expire in the 6 months’ after 1 January 2021||Renew re-registered design with UK IPO within 6 months of receipt of renewal notice|
|Registered and published but expired in the 6 months before 1 January 2021 and remains in EUIPO late renewal grace period||Renew the RCD with the EUIPO using the late renewal process, which will automatically renew the corresponding UK re-registered design|
*NB – in respect of all corresponding RCDs that have been retained to protect rights in remaining EU countries, fees will need to continue to be paid separately to the EUIPO.
Many UK businesses have designs registered with the EU Intellectual Property Office (EUIPO) and we recommend that those businesses take stock now and consider whether they need to make arrangements to ensure that their rights remain protected.
In many cases, no action will need to be taken prior to the expiry of the transition period. However, in certain circumstances, for example where applications for RCDs remain pending on the final day of the transition period, organisations may need to take certain steps to ensure that their designs remain protected.
Following the end of the transition period, some businesses may see an increase in the costs associated with holding EU design rights. Whilst new UK rights will be created free of charge in most cases, the holding of separate UK and EU rights may have an impact in terms of administrative management costs (whether managed internally or outsourced to agents) and also in respect of paying separate UK and EU renewal fees when such fees become due. As such, businesses should assess the number of EU designs they hold now and consider how the changes in intellectual property law may impact their future costs.