Brexit & registered designs: act now to save on fees

26th November 2020

With the end of the transition period looming large, Brexit is firmly resuming its place on the agenda for many businesses. For registered design protection, as with many areas of law, the advice in relation to Brexit has changed at various points since the referendum result was announced back in June 2016. Re-engaging with your design filing strategy and adapting it to the post-Brexit legal landscape, may seem a daunting prospect; but it needn’t be.

What is going to happen?

Pursuant to the terms of the Withdrawal Agreement, the UK IPO has confirmed that at the end of the transition period (on 31 December 2020) it will:

(a) automatically duplicate all Registered Community Designs (RCDs) that are registered and fully published onto the UK designs register as equivalent national UK registered designs (UKRDs). This will be done at no cost to rights holders.

(b) introduce a 9 month grace period for holders of pending RCD applications to apply for UKRDs claiming the filing or priority date of their pending RCD. Application fees will have to be paid for these new UKRD applications.

RCDs that are registered but under deferred publication will be treated as pending applications, meaning that the 9 month grace period will apply.

What do you need to do now?

If you want to obtain protection that will ultimately cover both the EU27 and the UK at the lowest cost possible (and you have no reason to request deferred publication) you should file for RCD protection as soon as possible. Provided there are no deficiencies or problems with your application any RCD filed before the end of November should comfortably proceed to registration and full publication by the end of the year, meaning that you’ll get separate UK national protection in January for free. RCDs filed in the first half of December may also make it through the system in time, but given the likely surge in filings, and Christmas closures, the sooner you file the better.

What if deferment is required?

If you already have an RCD under deferment or if you file a new RCD application before the end of this year, and publication is still deferred by the end of the year, you can use the 9 month grace period to apply for national UK protection. Provided the UK application is filed by the end of September 2021, the filing or priority date of the RCD will apply to the new UK filing.

The new UK right can itself be filed with a request for deferment. However, there is one important thing to note: the new UK right cannot be deferred until a later date than the end of the deferment period for the RCD.

As the default deferment period in the UK is only 12 months (from the date of filing), rather than the 30 months provided by the RCD system, there will be some calculations to do to work out when is best for you to file the UK application. This will depend on how far through the 30 month period your RCD is and how long you need to keep your design hidden for.

For example, if your RCD deferment period is set to end on 30 April 2021 you could either file your UK application in January 2021 with a request for deferment (but noting that it cannot be deferred until later than 30 April 2021) or you could simply wait until after 30 April 2021 and file the UK right without a request for deferment. The latter option is cheaper (as no deferment fees need to be paid), though you would have a period during which you wouldn’t have UK protection in place. In either case you would have the same deemed date of filing, as long as the UK application is filed before 30 September 2021.

By contrast, if your RCD deferment period is not due to end until 30 April 2023, the earliest you can file your UK application and avoid it being disclosed before the RCD is 30 April 2022 (which means you’ll not be able to claim the RCD filing date for the UK right).

What if you filed UK applications at the same time as your RCD, and they are both still under deferment?

During the past four years many businesses and individuals will have “double filed”, seeking both UK and RCD protection for the same design. This was a sensible strategy before there was clarity on what was going to happen after Brexit. For any such rights that are still under deferment but which can now be disclosed, there is scope to save on official fees by lifting the RCD deferment before the end of this year. In that case, new UK rights will be created (at no charge) and the original UK filings can be allowed to lapse through non-payment of the official registration fees (which at £40 per design are more expensive than the filing fees in the UK if dealing with a multiple filing).

What is the best strategy?

The appropriate strategy will depend on the design holder’s priorities:

1. If there is no longer a need to keep the designs hidden: avoid paying the final registration fees for deferred UKRDs. During what is left of the transition period, the RCDs will provide protection for the designs in the UK. Provided the RCDs are published before the end of the transition period, they will automatically be converted to comparable UK rights without charge to the design holder.
2. If there is still a need to keep the designs hidden at present but there will no longer be such a need by 30 September 2021: do not pay the registration fees for your existing deferred UKRDs but use the 9 month grace period to refile UKRDs with the filing date of the RCDs. The new UKRDs can be filed without a request for deferment. In this case filing fees will have to be paid for the new UKRDS. However, the official fees for filing multiple designs in the UK are substantially cheaper than the final registration fees in the UK. By way of example, the fee for applying to register up to 20 designs is £90 whereas the official registration fees for 20 designs would be £800. In fact, it only works out cheaper to pay the registration fees rather than new filing fees if the UKRD application just covers one design. Again, the RCDs will provide protection for the designs until the end of the transition period. The new UKRDs will provide backdated rights to the filing date of the RCDs. This will save costs, but it does mean there will be a period during which there will not be protection in place in the UK.  
3. If you want to keep your designs hidden for as long as possible and the RCD deferment period ends on 30 September 2022 (or earlier): do not pay the registration fees for your existing deferred UKRDs and file new UKRDs before 30 September 2021 with a request for deferment and claiming the filing date of the RCDs. The UKRDs should ideally be filed 12 months before the end of the RCD deferment period. As above, this will mean there will be a period during which there will not be protection in place in the UK.

Over the coming days and weeks design holders should check the upcoming fee deadlines, consider the most appropriate timing for publication of their designs and monitor the relevant deadlines to lift RCD deferment or refile UKRDs in 2021.