James J. Aquilina, Of Counsel

Publications & Media

Brexit’s Impact on European Design Registrations

Protecting the Product Justin E. Doop, James J. Aquilina

Brexit flags

The United Kingdom (UK) officially withdrew from the European Union (EU) in early 2020, which commenced a transitional period that expired on December 31, 2020. During this transitional period, the UK remained subject to the EU Design System and the design laws of the European Union Intellectual Property Office (EUIPO). However, as of January 1, 2021, the UK is no longer subject to the EUIPO design regime.

Owners of EU design registrations may now be wondering how their EU design registrations and pending applications have been and will continue to be impacted by Brexit. Answers to those questions are provided below, along with additional information that should be helpful to EU registered design holders. Importantly, for both issued and pending applications, additional action on the part of rights’ holders will be necessary to ensure the future protection of their designs in the UK.

European Union Design Registrations that were Issued and Active as of December 31, 2020

In short, if an EU Registered Community Design (RCD) was issued and active as of December 31, 2020, a corresponding UK registered design right will be created automatically, free of additional registration costs. The registration number for each “cloned” UK design registration will be the existing European Design Registration number, prefixed by a “9.” For example, the corresponding UK design right for EU RCD No. 004048098-0004 would be 9004048098-0004.

The application filing dates of all impacted EU RCDs will be maintained for each cloned UK design right, and the corresponding UK design right will remain active and in force, subject to the same renewal deadlines and ultimate term of protection as the corresponding EU RCD. However, moving forward, each UK design registration will be treated as if it had been applied for and originally registered under UK law, and renewal payments will be separately required for each cloned UK registration.

European Union Design Applications that Remained Pending as of December 31, 2020

If an EU design application was not officially registered as an EU RCD as of December 31, 2020, an applicant will have nine months to apply for a corresponding UK design right. This nine-month window began on January 1, 2021 and extends through September 30, 2021. Unlike EU design registrations that were already in force as of the end of 2020, this process is not automatic, and the Applicant will be required to pay a filing fee if a corresponding UK design registration is desired. Once filed, these counterpart UK design applications will be treated strictly as UK design applications and examined under UK design law.

European Union RCDs for which Publication Remained Deferred as of December 31, 2020

With respect to an EU RCD for which publication remained deferred as of the end of 2020, the UK Intellectual Property Office (UKIPO) will also treat this as equivalent to a pending application, requiring the filing of an equivalent UK registered design application on or before September 30, 2021. The UKIPO will then permit deferred publication of an equivalent UK designs application for either: 1) 12 months after the filing date of the corresponding UK design right application; or 2) until the deferment period of the EU RCD ceases, whichever occurs earlier. The UKIPO has provided the following examples at its website here:

Pre-January 1, 2021 filing date of deferred RCD

Amount of maximum RCD deferment period remaining at January 1, 2021

Post-January 2021 filing date of UK application

How long publication will be deferred

October 1, 2018

3 months

(i.e. until April 1, 2021)

March 1, 2021

1 month (i.e. until April 1, 2021, when corresponding RCD deferment period expires)

January 1, 2020

18 months

(i.e. until July 1, 2022)

October 1, 2021

9 months (i.e. until July 1, 2022, when corresponding RCD deferment period expires)

November 1, 2020

28 months

(i.e. until May 1, 2023)

October 1, 2021

12 months (i.e. until October 1, 2022, when 12-month UK deferment period expires)

December 31, 2020

30 months

(i.e. until June 31, 2023)

March 31, 2021

12 months (i.e. until March 31, 2022, when 12-month UK deferment period expires)

New Design Application Filings on or after January 1, 2021

As of January 1, 2021, if design rights are desired in both the EU and the UK, an applicant will be required to file separate design applications in both jurisdictions. The Quarles & Brady design rights team has been in close consultation with counsel in both the EU and the UK, and will be happy to answer any questions that may arise in light of the transition to multiple design regimes caused by Brexit.