There is no “one size fits all” approach to Brexit. We recommend discussing strategies with your usual advisor.
With a possible Brexit date of 29 March 2019, the UK Government has now published guidance on what they consider to be the fall-back position of a “no deal” scenario. They have now stated that granted Registered Community (EU) Designs (“RCDs”) will continue in force in the UK after the Brexit date. They have also stated that there will be a nine month period after the Brexit date in which to file a UK design application corresponding to any RCD application pending as of the Brexit date whilst maintaining priority and filing dates. There are various uncertainties still remaining, but the UK Government appears to intend to avoid any potential loss of rights by RCD holders and applicants, even as a fall-back position.
Regarding registered designs under the Hague system designating the EU, the UK Government has issued little guidance other than stating that they are working with WIPO to ensure continued protection in the UK.
In terms of new applications, the only step to entirely insure against Brexit is to file a new UK design application alongside RCD applications (particularly for registrations under the Hague system). This is because the UK Government has only issued guidance, which is relatively easy for them to amend, and has not implemented any legislation yet. However, we also advise that if the UK Government does implement their guidance in the event of a no deal scenario, this should lead to the continued protection of all existing RCDs and RCD applications in the UK, either automatically or through refiling of pending applications. Thus if new UK design applications are filed in addition to RCD applications and all is well with Brexit, there could be duplication.
Regarding unregistered rights, the UK Government has issued guidance that in the event of a no deal scenario they will take steps to ensure Unregistered Community (EU) Designs (“UCDs”) will continue in force in the UK after Brexit and that a new right will be created to mirror the protections provided by UCDs in the UK after the Brexit date.
Background and detail
On 23 June 2016, the UK voted by referendum voted, narrowly, to leave the EU (“Brexit”).
On 19 March 2018, draft transition terms were published, which preserved the status quo for RCDs until 31 December 2020. However, these terms were issued under the rubric “nothing is agreed until everything is agreed” and, in September 2018, it looks as if agreement is not likely. Therefore, the UK is scheduled to leave the EU without a deal, on 29 March 2019.
On 19 July 2018, it was confirmed in the UK Parliament that on Brexit day, all RCDs will automatically “clone” into UK national rights, without official fees being paid.
On 24 September 2018, the UK Government’s Department for Business, Energy & Industrial Strategy issued guidance on their position in the case of a “no deal” Brexit. RCDs will continue in force in the UK by virtue of a new UK equivalent right, which will be implemented with “minimal administrative burden” and will be renewed in the UK. They stated that RCD applications which are still pending at the Brexit point will have a special nine-month period during which a UK application can be filed (including by payment of the usual UK application fees), mirroring the RCD application and preserving all its details and dates. No formal comments have yet been made about the status of ongoing invalidations or RCD applications that have deferred publication. However, it appears that, if possible, it would be of benefit to aim have a pending RCD application at least registered by the Brexit date in order to avoid having to pay the additional fees of filing a UK application.
The UK Government also stated that UCDs existing at the Brexit date will continue in force in the UK until they expire. In addition, they will create a new “supplementary unregistered design right” in the UK that mirrors the characteristics of UCDs for all designs that are disclosed in the UK after the Brexit date. Furthermore, they have committed to amend the legislation to ensure that UK unregistered design right “functions effectively” after Brexit date. Since these rights are not registered there appears to be little action that can be taken to mitigate any issues that might arise.
If you wish to discuss any Brexit-related issues, then please contact your usual advisor.