By Deborah Kirk and Elizabeth Purcell

Brexit discussions will need to address the application of the Community unregistered design right (CUDR) in the UK following the UK’s exit from the EU. The CUDR currently provides:

  • Unregistered design protection in all of the EU member states
  • Automatic and broad protections to UK designers for qualifying designs first disclosed within the EU that would otherwise prejudice a subsequent application for a Community registered design right
  • That a disclosure in the UK by a designer is not novelty-destroying of a subsequent application for a registered Community design right if submitted within 12 months of the disclosure

In terms of the UK’s position following Brexit:

  • The UK will no longer be a member state afforded protection by the CUDR, so the 12-month grace period may not be available.
  • The UK Intellectual Property Office has stated that “protection for unregistered designs will continue to exist through the UK unregistered design right”.
  • However, given the UK unregistered design right offers a narrower protection than the CUDR, how the UK government will aim to fill in the gap between the CUDR and the UK unregistered design right remains to be seen.

The third point raises a particularly interesting question in the light of the European Commission’s (EC’s) recently expressed view that rights with unitary effect ought to continue to have equivalent effect in the UK following Brexit. For details on the EC’s proposals regarding intellectual property rights and Brexit, read this Latham.London post.

This gap between UK rights and CUDR will have a big impact on events like London Fashion Week, which currently premiers many UK designs, and will impact other UK creative industries with fast-moving product offerings such as the children’s toy industry. Post-Brexit, UK designers who are looking to maintain the novelty of their designs in order to apply for a Community registered design right may have to alter their behaviour by ensuring that their designs are launched first in the EU.

Without legislation to adjust the UK’s position, designers may:

  • No longer have an incentive to market their products in the UK first
  • Need to start disclosing their designs simultaneously in the UK and the EU if they are looking to launch in the UK and subsequently obtain registered protection
  • Need to apply at the outset for a UK registered design right, which could prove to be expensive and time-consuming, especially for products that have a short-term shelf life

Latham will monitor CUDR developments as Brexit discussions continue.

This post was prepared with the assistance of Caroline Omotayo in the London office of Latham & Watkins.