Now that the United Kingdom has left the European Union and the withdrawal period is coming to an end, there will soon be big changes in how registered design protection is obtained in the UK.
From 1st January 2021, it will no longer be possible to obtain registered design protection in the UK via an EU Registered Community Design. This means that after this year, registered design protection in the UK can only be acquired with a UK Registered Design right.
In the meantime, there are transition arrangements in place to ensure that owners of existing EU Registered Community Designs – which for the time being are still in force in the UK – will not lose their UK rights due Brexit.
Firstly, any EU Registered Community Designs that have been registered and published (and are still in force) by 31st December 2020 will be automatically re-registered in the UK, without payment of official fees, creating a corresponding and separate UK design right (a so-called “Re-registered Design”) that provides the same protection as a UK Registered Design.
Secondly, any EU Registered Community Designs that have been filed but have not yet been published by 1st January 2021 can be re-filed as a UK Registered Design and will benefit from the same filing (and priority) date as the EU Registered Community Design application. The owner of the design will have nine months to make this filing, but this option will require the payment of the normal official fees for filing a UK Registered Design. This includes EU Registered Community Designs where publication has been deferred. According to the new UK law, any EU Registered Community Deigns which remain deferred at the cut-off date will be treated the same way as pending applications.
Publication of the new UK Registered Design can itself be deferred until the 30-month deferment period of the corresponding EU Registered Community Design expires, up to a maximum of 12 months from the filing date of the UK Registered Design application.
So for would-be registered design applicants, there is a clear advantage to filing an EU Registered Community Design now, or in the next few months, while there is still time for it to be published before the 31st December cut-off: you will essentially receive the UK Registered Design for free.
If you wait too long, so that the design is either not filed or not published by the cut-off date, then the costs for obtaining registered design protection in the UK will be separate and additional to the cost of obtaining registered design protection in the EU.
In any event, we are and will continue to be able to file both EU Registered Community Designs and UK Registered Designs, as the only IP firm in Finland with a Chartered UK Patent Attorney, who is qualified to handle UK Registered Design filings.
If you need more information or have any questions about EU or UK registered design rights, please get in touch.