Top tips for preparing your design protection for Brexit

Despite what we know about the withdrawal agreement and a ‘no-deal’ Brexit, Brexit still brings about a level of uncertainty. However there are things you can be doing to best prepare yourself for Brexit and make the transition as smooth as possible for you and your business. Here is our summary of what you need to be thinking about now.

  1. Consider your Filing Strategy

Post-Brexit a Registered Community Design (‘RCD’) right will no longer include  protection in the UK. If you have already registered your designs by way of an RCD, the UK government has said that owners of RCDs will essentially be given an equivalent registered UK right at the point of Brexit. However if you are currently contemplating registering your designs, we recommend that you do this as soon as possible via an RCD application to benefit from a UK registration without having to pay for an RCD and a UK registration.

Note that RCDs are normally granted within days of the application being filed (subject to any office actions being raised). However, if you do have a pending application at the point of Brexit you will be given a nine month grace period to re-file the application in the UK with the same priority and filing dates. Note that the onus will be on the design owner to recognise that the application is pending and then re-file in the UK.

  1. Review your licensing agreements

Consider existing licenses where the territory licensed is the “European Union”. Any such licences may or may not include the UK after Brexit. This will depend on whether the EU is being used simply as shorthand for a list of countries or not. This may be explicit from the wording of the licence itself (for example, designating the EU “as constituted at the date of this Agreement” or “from time to time”).

  1. Consider your legal representation

Consider whether your existing representatives are able to continue to act for you following Brexit, since professional representatives acting for you in design matters before the EUIPO will be required to have EU nationality, place of qualification and place of business.

  1. Review your EU Customs Notices

Review whether your Customs Notices were filed and granted through UK Customs. If you have filed a UK Customs Notice in the UK it will need to be re-filed in an EU Member State upon the UK’s withdrawal if customs enforcement is still sought in the EU. Ireland would be a practical choice of EU Member State to re-file in as the UK Customs Notice would not need to be translated. Rather than waiting for the withdrawal date, it is possible to do this prior to the UK’s exit from the EU.

  1. Check if you have .eu Domain Names

At present, websites with .eu domains may be revoked if they are not held by an EU undertaking, EU organisation or EU resident. If your business uses any .eu domains, you should consider assigning these to an agent or subsidiary with an EU address.