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Brexit: European Commission rejects plea for reciprocity for designers

Heidi Hurdle
05/11/2020

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United Kingdom

UK designers, after four years of arduous campaigning, have just suffered a set-back in the ongoing trade talks between the European Commission and the UK, as their hopes of reciprocity for unregistered designs and a level playing field have been quashed.

Unregistered designs in the UK: current law - quick refresher!

Design law in the UK is a complex matrix of different forms of overlapping and interlocking protection. As well as several different avenues for protecting designs through registered rights, there are currently two ways to protect unregistered designs: via the UK design right or the EU unregistered Community design (UCD), both of which arise automatically.

Although the UK design right has a significantly longer period of protection of up to 15 years, compared to the UCD of three years, the UCD has other advantages over the UK right and provides a broader type of protection. The UCD has proved popular with designers since it was created in March 2002, particularly those in the fast moving fashion industry with short expected lifetimes of their designs, and also those without the budget for registering a design.

The UCD protects the appearance of the whole or part of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product and/or its ornamentation. The UK right protects original, non-commonplace designs of the shape or configuration of products, excluding surface decoration - so it does not protect 2D designs, in contrast to the UCD which protects both 2D and 3D designs.

What happens from 1 January 2021?

From 1 January 2021, a supplementary unregistered design (SUD) will become available in UK law (alongside the existing UK design right). The SUD will be a new right in the UK which will provide identical protection to that conferred by the UCD, but for the UK only. This has been created to plug the gap left by the absence of the UCD so that crucially 2D designs can still be protected.

The SUD will be established by first disclosure in the UK (or another qualifying country), not the EU. Consequently, it is possible that disclosure in the EU could destroy the novelty in that design should a business later seek to rely on UK unregistered rights, and visa versa. This could be very significant and detrimental to businesses as we explore below.

During the turbulent trade talks between the Commission and the UK, the UK government (following intense lobbying from the design industry, including ACID (Anti Copying in Design)) proposed a system for continued reciprocal protection from 1 January 2021 meaning that disclosure in either the EU or UK would give rise to both UCD and SUD rights. However, as reported in the press and on ACID's website this proposal was rejected by the Commission during the negotiations in mid-October. This means that designers will now have to choose between disclosing in the UK and getting a UK-wide right only, or, disclosing in the EU and getting the EU-wide UCD.

Implications for business

The lack of reciprocity between the EU and UK on this issue of disclosure will sadly add to what is already a complex situation for designers and will be a further key factor to take into account when preparing to launch new products. It will become even more important for businesses to consider in advance the type of protection they may need for their designs.
 
For example, if a design is disclosed at London Fashion Week, the wider protection of an UCD in the EU will be lost as the UK disclosure would undermine the design's claims of novelty in the EU market. The designer would only have protection via the new UCD (unless it could also meet the more rigorous and restrictive requirements of the traditional UK design right, or perhaps copyright.) The converse would of course apply if the design was first disclosed at Paris Fashion Week.

One possible solution currently open for debate is whether simultaneously disclosing the design in say London and Paris would avoid this problem. However, until this has been tested in court or has become the industry norm it is not going to be a fail-safe option. In the meantime, designers are advised to consider carefully their key markets for new products in both the short and long term, and to take legal advice on the full range of options for protection available to them, including registered and unregistered rights.

For further information, see IPO news story, 28 October 2020, and our 'Brexit and intellectual property - a new horizon' guide.

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