Comparison between UK and EU design rights
With the UK now out of the EU, it is a good time to review the similarities and differences between the various design protections available in the EU and the UK. It should be noted that the EU registered or unregistered designs no longer provide protection in the UK.
Protection in the EU is possible by filing an EU registered design application. In the UK, protection is available by filing a UK registered design application and via cloned UK registered design, which is a UK copy of an EU registered design in existence before January 1, 2021.
- Post-Brexit considerations summary: If an EU registered design existed by December 31, 2020, a corresponding UK registered design is automatically created by the UKIPO to compensate for the loss of EU design protection in the UK;
- If there was a pending EU design application or registered design with deferred publication as of December 31, 2020, a fresh UK design application must be filed by September 30, 2021 to obtain protection in the UK; and
- After December 31, 2020, a separate application must be made before the EUIPO and the UKIPO, respectively, for protection in the EU and the UK.
The post-Brexit considerations are thus straightforward - file separate UK and EU design applications to obtain respective protections.
As there is really no general loss in registered design protection in the UK, there are, however, some points to be noted. Especially, going forward post Brexit, the following similarities and differences between the EU and national UK registered design regime should be considered in building your design portfolio for your businesses.
- Speed of registration - Publication and registration of both the EU and UK registered design (unless formal objections are raised) usually take place between 2 to 4 weeks from the filing thereof. This is because neither the EUIPO nor the UKIPO carries out substantive examination.
- Novelty Grace period - At both the EUIPO and the UKIPO, the Applicant could make use of a 12-month grace period following a prior public disclosure of the design.
- Term of protection - Both the EU and UK registered designs provide a maximum term of protection for 25 years (provided they are renewed every 5 years).
- Protectable subject matters - Matters such as typefaces, logos, surface ornamentation, graphical interfaces can be protected via both the registered design regimes.
- Number of designs - A maximum of 50 designs can be protected in the UK via a multiple designs application. The EUIPO, however, allows an unlimited number of designs in a multiple design application.
- Design views – Per design, the EUIPO allows 7 protected views and a maximum of 3 unprotected views, which are only for explanatory purpose without limiting the scope of protection. The UKIPO allows up to 12 views per design.
- Tips: The additional views could be used, for example, to delimit from the known registrations and/or to show views not visible in others.
- Multiple designs share same classification? - For EU registered designs, all of the designs in a multiple design application must, in principle, relate to similar subject matter such that they can be covered under the same Locarno classification. As an exception, designs relating to ornamentation can be included in multiple design applications with designs in another Locarno class. There is no such requirement for a multiple UK design application and the multiple designs can relate to any combination of classes.
- Deferred publication/registration - The EUIPO allows the publication of the EU registered design to be deferred up to 30 months from the priority date. The UKIPO, which refers to this as deferred registration, allows the registration of the UK design application to be deferred up to only 12 months from the initial filing.
- Written/verbal disclaimers - In addition to the visual disclaimers (such as broken lines), the UKIPO allows written or verbal disclaimers (provided they are clear and understandable) to explain the limitation in the scope of the design. The EUIPO does not allow written or verbal disclaimers. Tips: Written disclaimers can be recommended to discount other elements of the submitted views.
- Animations – For EU design, protection of an animation is possible even if user’s input is required to progress through the views. UK statutes, however, limit the definition of an animation to sequential progression of views shown without user’s input. Tips: EU design would be an option to protect progressions of views through, for example, different screens even if the user may have to toggle between different screens.
Even though there are some similarities between the UK and EU registered design regimes in terms of duration of protection, requirements for validity and rules for infringement, the above differences between them (in particular, number of views, written disclaimers, animations, and related designs in different classes) could be crucial and be strategically used to maximize the filing strategy and the scope of protection of their EU and UK designs.
As the name suggests, no formal registration process is necessary. In contrast to registered design rights, an unregistered design right (whether EU or UK) is not a monopoly right and gives its owner only the right to prevent unauthorized copying of the design.
The EU unregistered design rights come into effect automatically when the design is first made available to the public within the EU.
The UK unregistered designs come into effect automatically upon creation of the relevant design.
The impact of Brexit on the unregistered design protection rights is not as straightforward as that for the registered design protection rights, and leads to a possibility of deviation or a gap in protection for the right holders.
As can be seen from the below differences, this is mainly because the scope of the UK unregistered design right does not mirror the scope of the EU unregistered design right.
- Term of Protection – An EU unregistered design right has a duration of 3 years from the date the design was first made available to the public in the EU. Protection for an UK unregistered design right lasts for a maximum of 15 years from the end of the calendar year in which the design was first recorded or an article was first made to the design, whichever occurred first. If articles made to the design are put on sale within the first five years of that term, then the UK unregistered design right lasts for only 10 years from the date of first sale. The effect of the UK unregistered design right is reduced during the last five years of said term because during that period, a license is available as of right.
- Protectable subject matters - An EU unregistered design right can protect the appearance of the whole or a part of a product (i.e., 2D or 3D designs including surface decoration) and may arise from lines, contours, colors, shape, texture, materials, ornamentation, and graphic symbols. A UK unregistered design right can only protect shape or configuration and not surface decoration (i.e., in effect, only 3D designs).
- Validity requirements – For an EU unregistered design right, the designs must be novel and have individual character over prior designs. For UK unregistered design rights, the design must not be copied (i.e., original) and not commonplace in the design field in question at the time of its creation.
As a consequence of these differences, after Brexit, designs that would have been protected under EU registered design could become not protectable in the UK. To compensate for this, the UK has created two additional types of UK unregistered design rights:
- a Continuing Unregistered Design (CUD) - any EU unregistered design that existed on December 31, 2020 will continue to apply in the UK for the rest of its three-year term .This right is to prevent any loss in protection in the UK for any EU unregistered design that existed on December 31, 2020 and still had some term left to run; and
- a Supplementary Unregistered Design (SUD) –that covers designs disclosed on or after January 1, 2021.This right is to cover the above-mentioned gap created by the lack of EU unregistered design. In this respect, designs that are first disclosed in the UK (or another qualifying country) after December 31, 2020 will be protected automatically under the SUD right in the UK for a 3-year term from the date of that disclosure.
Both CUD and SUD shall mirror the EU unregistered right in the UK in terms of validity, infringement and term of protection. The CUD and SUD shall co-exist with the UK unregistered design right.
Effect of location of first disclosure on unregistered design protection
A first disclosure of a design in the EU can destroy novelty of such a design in the UK and vice versa. However, to achieve EU unregistered design protection of a new design, that design must be first disclosed within the EU. Similarly, to achieve UK unregistered design protection, it will be necessary to first disclose the design within the UK. This leaves the designer to decide whether to disclose first in the EU (to get EU unregistered design protection) or in the UK (to get UK unregistered design protection) knowing that one disclosure may destroy novelty of the other and thus cannot have both protected. In this respect, it should be noted that a question as to whether or not EU unregistered design right can arise if a design is first disclosed outside of the EU (for example, in a trade show in the USA, China, or UK) was, unfortunately, left unanswered. The question was posed by the UK High Court of Justice to the Court of Justice of the European Union (CJEU) just before the UK left the EU (Beverly Hills Teddy Bear Company v PMS International  EWHC 2419 (IPEC)). Possibly due to Brexit and out of court settlement between Beverly Hills and PMS, the request to the CJEU was withdrawn by IPEC.
It is also not yet clear whether a first disclosure taking place, for example, via internet in a website or a social media platform at the same time in the EU and the UK (and thus also simultaneously all over the world), would satisfy the requirement of being “first disclosed” in the EU and the UK. Imagine a case of a disclosure of a design via Instagram in Munich at 00:30 am CEST (on August 2, 2021) when it is still 11:30 pm on the previous day (August 1, 2021) in the UK. It is unclear whether such a simultaneous disclosure in the UK can become novelty destroying for the simultaneous disclosure in the EU. Unless and until there is a clarity on how and whether or not simultaneous disclosure will be accepted by the courts, it appears that the best practice would be to register the designs in both the EU and the UK following any such disclosure taking advantage of the twelve-month grace period provided for registration.
Tip: To secure some design protection in both the UK and EU therefore, it can be necessary to:
- First disclose your new design in the EU or in the UK (to achieve unregistered design protection in the EU or in the UK) and also file as a registered design in the UK or in the EU; or
- Register the design in both the EU and the UK to avoid relying on unregistered design rights.
Even though the scope of protection and the criteria for infringement vary greatly between registered and unregistered design rights it can be advantageous, given their distinct and complementary nature, to have both the registered and unregistered design rights depending on your business needs.