Unregistered design right protection in the UK and EU post-Brexit

Posted: 25/05/2021

Unregistered design right protection in the UK is changing following the end of the Brexit transition period.

For all designs first made available before 31 December 2020, continuing unregistered Community design rights will apply until the end of the term of protection (three years from the date at which a design is first made available to the public). Of course, UK unregistered design rights are also available to these designs but they would, however, only protect the shape and configuration of a design.

Those designs first made available to the public after 31 December 2020 will no longer be protected by Community unregistered design rights. To replace this loss of rights, the UK Government has created a new unregistered design right called supplementary unregistered design.

However, it should be kept in mind that first disclosure in the EU destroys novelty in the UK and first disclosure in the UK destroys novelty in the EU.

Whilst many practitioners are discussing simultaneous disclosure to avoid destroying novelty in the UK or the EU, simultaneous disclosure has not been tested by the courts and remains uncertain.

Until there is clarity on whether simultaneous disclosure will be accepted by the courts, it is best practice to register the designs in both the UK and the EU following disclosure (and within the twelve-month grace period provided for registration).

The recent design case of Rothy’s Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) highlights that one of the additional benefits of registering designs is that there is no requirement to prove copying. The case also showcases the importance of registering carefully prepared drawings, which in this instance provided the claimant with protection over the material and texture of their shoes.

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