GovWire

Detailed guide: Changes to EU and international designs and trade mark protection from 1 January 2021

Government Digital Service

December 3
13:22 2020

This guidance explains the changes to UK law as a result of the Withdrawal Agreement, that preserve existing design and international rights. It also covers other legislative changes required to effectively administer and implement the new rights.

Designs are a form of intellectual property. They protect the appearance of the whole or part of a product resulting from the features of, in particular, its lines, contours, colour, shape, texture, materials and ornamentation.

A design can be protected if it is new and has individual character compared to designs that are already in the public domain.

Trade marks enable consumers and businesses to differentiate the goods and services of one trader from another. They commonly take the form of words, logos, or a combination of both.

Trade marks are registered rights, with protection in the UK granted by the Intellectual Property Office (IPO), the European Union Intellectual Property Office (EUIPO), or via an international registration filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO).

What will change after the end of the transition period

At the end of the transition period (1 January 2021), registered Community designs (RCDs), unregistered Community designs (UCDs), will no longer be valid in the UK.

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.

Design protection can currently be obtained via a registered right or an unregistered right in the following ways:

  • a national registered design granted by the IPO of the UK
  • a registered Community design granted by the EUIPO
  • an international registration designating either the UK or the EU, filed under the Hague Agreement at WIPO
  • unregistered protection can be obtained in the UK through the UK design right and the EU unregistered Community design.

On 1 January 2021, any existing RCDs, UCDs, European Union Trade Marks (EUTM), and International (EU) designs and trade marks will only cover the remaining EU member states.

Registered design

Creation of the re-registered design

All registered and published RCDs will have comparable UK designs, which will be recorded on the UK register. These will be treated as if they had been applied for and registered under UK law.

The legislative changes introduced in the UK will ensure that the holder of an RCD is provided with an equivalent UK right. They will retain the registration and application dates recorded against the corresponding RCDs and will inherit any priority dates.

As fully independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD.

Re-registered designs will be created at no cost to the RCD holder, and we are ensuring that minimal administrative burden will be placed upon the right holder.

Pending applications

On 1 January 2021, there will be a small number of RCD applications that are still pending in the EU system.

If you hold a pending RCD application on 1 January 2021, you will be able to apply to register a UK design in the nine months after the end of the transition period, this being up to and including 30 September 2021 and retain the earlier filing date of the pending RCD

To do so, the UK application must relate to the same design as that filed in the pending RCD application.

If the details of the UK application do not match those of the corresponding RCD application, then the earlier EU date(s) will not be recognised.

Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.

These applications will be treated as a UK registered design application. They will be examined under UK law. In these circumstances, the standard UK fee structure will apply.

Effect of priority claims

A priority date claimed under the Paris Convention that has been recorded against the corresponding RCD will be inherited by the re-registered design. The date of that priority claim will have effect where proceedings involve a re-registered design with a priority claim inherited from the corresponding RCD.

Pending invalidation actions at the EUIPO

Registered designs can be challenged by third parties under the grounds of invalidation. If this action succeeds, then the right is removed fully or partially from the register.

At the end of the transition period, we will create UK re-registered designs for all registered community designs (RCDS) registered at 31 December 2020. This includes registered community designs that are subject to invalidation proceedings.

The Withdrawal Agreement requires that where a registered community design (RCD) is subject to ongoing invalidation proceedings at the end of the transition period, and is subsequently invalidated, the outcome shall be applied to the corresponding UK re-registered right.

This means that if you own a RCD that is subject to invalidation proceedings at the end of the transition period and that right is subsequently invalidated, whether wholly or partially, your UK re-registered right will also be invalidated to the same extent.

If you are a party that has succeeded in invalidating a RCD and this action was ongoing at the end of the transition period, the invalidation will be applied to the UK re-registered right, without the need for you to bring a new invalidation action before the UK IPO.

There is an exception where the grounds for invalidating the RCD would not apply in the UK. In this case the UK right will not be invalidated. This is referred to as a derogation.

All re-registered community designs which are subject to ongoing invalidity proceedings at the end of the transition period we will be recorded on a dedicated list on the IPO website. This list will be available once the transition period ends. When a final decision in the proceedings against the RCD is reached, meaning that no further appeals are possible, an invalidation notice may be sent to us by any person. We will also initiate the invalidation of a re-registered right or direct another party do to so if we become aware that the corresponding RCD has been invalidated.

If you are the owner of the re-registered design sending us an invalidation notice, and you wish to claim the derogation, you must send the derogation notice with the invalidation notice.

If a third party sends us an invalidation notice, we will send this

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