Design protection post Brexit – where and when to disclose

After many months of negotiations between the UK and EU, the EU has now confirmed that from 1 January 2021, designs first disclosed in the UK will no longer enjoy the benefit of unregistered design protection in the EU.

Designers will therefore need to choose the territory where they first disclose their designs carefully and also consider whether their designs can be protected by additional rights, such as registered design protection or under copyright.

This news will have considerable implications on designers of fast moving consumer goods that rely on unregistered design protection, such as fashion, jewellery and furniture designers, to protect their new collections. From 1 January 2021, designers will only have the benefit of unregistered design protection in the territory where the first disclosure took place – either the UK or EU, not both – and disclosure in one territory may destroy novelty in the design for the purposes of protecting the design in the other territory.

From 1 January 2021, 2 new unregistered design rights will be created in the UK:

  1. designs that are already protected in the UK as unregistered Community designs (or UCDs) will automatically be protected as UK continuing unregistered designs (or CUDs). The CUD will be automatically established on 1 January 2021 and will continue to be protected in the UK until the expiry of the usual 3 year term that attaches to UCDs; and
  2. supplementary unregistered designs (or SUDs) will be created to provide similar protection to that of the UCD, for the UK only. Protection offered by the SUD will not extend to the EU. Rather, the SUD is intended to mirror a UCD by providing UK protection for 2D and 3D designs for 3 years.

The SUD can only be established by first disclosure in the UK, and not EU disclosure.  If a design is disclosed in the EU, it may destroy novelty in the design for the purposes of seeking UK unregistered design rights. Conversely, first disclosure in the UK may destroy novelty in the design for the purposes of seeking UCD protection.

One way around this is to seek registered design protection in the UK and EU, which once registered, will provide designers with certainty that their designs are protected in both territories. The 12 month grace period following disclosure will continue to apply. In certain circumstances, designers may also enjoy copyright protection for their designs.

If you’d like to discuss how best to protect your designs, then please do not hesitate to contact us.