Guidance for businesses who have unregistered Community designs.
On 1 January 2021 (the end of the transition period), unregistered Community designs (UCDs), will no longer be valid in the UK. On 1 January 2021, these rights will be immediately and automatically replaced by UK rights.
If you own an existing right, you do not need to do anything at this stage.
Continuing unregistered design
Designs that are protected in the UK as a UCD before 1 January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1 January 2021.
It will continue to be protected in the UK for the remainder of the three year term attached to it.
The fact that a corresponding UCD was established before 1 January 2021 through first disclosure in the EU but outside of the UK will not affect the validity of the continuing unregistered design.
Supplementary unregistered design
Under the new law, we are creating a UK unregistered design right called supplementary unregistered design (SUD).
This right will ensure that the full range of design protection provided in the UK before 1 January 2021 will remain available after the end of the transition period.
The terms of SUD protection will be similar to that already conferred by UCD. However, the protection it provides will not extend to the EU.
SUD will mirror UCD by providing UK protection for both three and two dimensional designs for a a period of three years. The right will be subject to interpretation by the UK Courts.
SUD will be established by first disclosure in the UK.
First disclosure in the EU will not establish SUD. However, it may destroy the novelty in that design, should you later seek to claim UK unregistered rights.
Similarly, first disclosure in the UK may not establish UCD and could destroy the novelty in that design, should you later seek to claim EU unregistered rights. However, you should check guidance from the EU Intellectual Property Office on this.
You should carefully consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU.
UK design right
UK design right will continue after 1 January 2021 and will function alongside continuing and supplementary unregistered design.
It will continue to provide protection for the shape and configuration of three dimensional articles for up to 15 years from the end of the year in which the design was first recorded or a corresponding article was first made.
The qualifying criteria for UK design right will change on 1 January 2021.
Until the end of the transition period UK design right can be established in the following circumstances:
- by an individual who is resident in the EU
- by a business formed under the laws of an EU member state
- where first disclosure of the design occurs in an EU member state
This means that activity inside of the EU but outside the UK can be sufficient for establishing UK design right.
From the end of the transition period, qualifications for the UK design right will be limited to:
- people resident in the UK or a qualifying country (as defined in The Design Right (Reciprocal Protection) (No. 2) Order 1989).
- businesses formed under the laws of the UK or a qualifying country
Where qualification is a result of first marketing, you will need to have disclosed your design in the UK or a qualifying country.