On 22 March 2019, the government published a its latest guidance on the position of registered designs, design rights, and international designs and trade marks in the UK in the event of a no-deal Brexit.
The key takeaway point is that registered Community designs (RCDs), unregistered Community designs (UCDs), and protected international design and trade marks designating the EU will no longer be valid in the UK. On exit day, these rights will immediately and automatically be preserved in the UK through the creation of comparable UK rights. The original rights will however continue to cover the remaining EU member states.
What this means is that provided on exit day you already have an existing right then you do not need to do anything else for it to be protected in the UK.
This latest guidance is described as complementing the technical notice on trade marks and designs published late last year and covered in our no-deal intellectual property briefing note. (It follows on from the government's no-deal guidance for EU trade marks (EUTMs), and patents and SPCs, which we have already blogged on.)
The government recognises that in the event of a no deal, existing legislation must be amended to ensure that UK protection granted by these rights is preserved. To that end government has introduced The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 which should be considered in conjunction with The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018. In addition, businesses will also continue to be able to use the international route for protection following the UK's ratification of the Hague Agreement for the international registration of industrial designs.
Similar to the reassurance we have had for some time that on exit day the government will provide holders of existing EUTMs with a comparable UK trade mark, the same has been said about the creation of equivalent UK registered design rights. The guidance deals with the creation of this right, which will be recorded on the UK. They will be fully independent UK rights which can be challenged, assigned, licensed or renewed, separately from the original RCD.
The rights will be shown on the register prefixed with the digit '9' (as mentioned in our earlier blog on the proposed new numbering systems). This will make it easier to identify re-registered rights from existing UK registered rights.
The guidance explains the position concerning pending applications: you will be able to apply for a UK registered design and claim the earlier filing date and any priority date of the corresponding RC D application. The details of the UK application must be the same as that filed in the pending RCD application. These applications will be treated as UK registered design applications. That means that they will be examined under UK law and the standard UK fee structure will apply.
It is also possible to opt out of the automatic re-registration of your existing RCD and the UK IPO website has a notice template to be used when requesting this. However, you cannot do so if you have assigned, licensed or entered into an agreement in relation to the re-registered design or if you have already launched proceedings based upon it.
The fees for renewing the re-registered UK design and the corresponding RCD will need to be paid.
There is a change in procedure for renewal reminders for re-registered designs that expire within the six month period after exit day. A notice will be sent on the actual day of expiry or as soon as is practicable after that date. That notice will inform you that the re-registered design has expired and that you have a further six month period in which to renew that right.
The guidance goes on to explain the position regarding designs which expire before exit day and those that are reinstated after exit day as well as the position as regards deferred publication.
There will also be re-registered international designs for International (EU) designs that are protected already. The status and process mirrors that of the re-registration of RCDs. These will be prefixed with the digit '8' on the register. Pending applications for International (EU) designs can claim the earlier registration date for the corresponding WIPO IR up to 9 months after exit day. Again, as with the re-registered RCDs, the applications will be examined and a fee is payable. Opting out is also possible, you can defer publication of an IR designating the EU (though if it is deferred on exit day it will be treated as an equivalent pending application) and you should remain vigilant of renewal dates (the same procedure applies for those designs which expire after exit day).
The designs which expire before exit day but within the 6 months prior and have not been subject to a late renewal action at WIPO may still be renewed provided the corresponding IR is renewed and the IPO is informed.
UCDs will continue to be protected as a UK unregistered design automatically on exit day. A new supplementary unregistered design will be created mirroring the UCD (without EU wide protection of course). UK design right will continue, though the qualifying criteria will change as it will be limited to those resident in or business formed in the UK or other qualifying country.