Brexit & Designs. The UK is leaving the EU, Marks & Clerk is not

Transcription

1 Brexit & Designs The UK is leaving the EU, Marks & Clerk is not

2 On 29 March 2017 the United Kingdom gave formal notice of its intention to leave the European Union, in keeping with the result of the referendum on EU membership that had been held the previous year. Unless agreement to an alternative date is reached, this means that the UK will leave the EU on 29 March The UK is leaving the EU, Marks & Clerk is not. Marks & Clerk is an outward looking firm with a long history of working internationally and across borders and we will continue to be one of the leading European intellectual property firms. We have had a presence in continental Europe for nearly 30 years, serving clients from the UK and the EU, as well as having offices in Asia and Canada. Negotiations between the UK and the EU continue but for the time being there is considerable uncertainty over what the future relationship between the UK and the EU will look like. Although some kind of transitional deal immediately following the UK s departure seems likely, the nature of that is also unclear. While Brexit will certainly impact virtually every aspect of the UK economy, and the legislative challenge will be significant, much of the current architecture of intellectual property law will remain unchanged following the UK s departure from the EU. International intellectual property agreements to which the UK is party such as the Paris Convention and the TRIPS Agreement, for example, exist outside of the EU so will be unaffected by Brexit. Likewise, relationships between the UK and the European Patent Office also exist outside the remit of the EU. Marks & Clerk s expert and dedicated Brexit team is keeping a close eye on the Brexit process and will continue to update our clients and our guidance regularly. Our offices Aberdeen (UK) 2. Birmingham (UK) 3. Cambridge (UK) 4. Edinburgh (UK) 5. Glasgow (UK) 6. London (UK) 7. Manchester (UK) 8. Oxford (UK) 9. Luxembourg 10. Paris (France) 11. Sophia Antipolis (France) 12. Ottawa (Canada) 13. Beijing (China) 14. Hong Kong (China) 15. Kuala Lumpur (Malaysia) 16. Singapore

3 Brexit & Designs Design law in the UK helps product designers and developers protect the shape and configuration of articles they create. Rights in a design may arise automatically, as in the case of unregistered designs, or may be obtained after formal application process, as in the case of registered designs. These design rights are governed separately by both European and UK law, which act concurrently. Now that the UK has begun the process of leaving the EU, it is important for designers to consider how best to protect their current and future designs in the UK and the remainder of the EU. UK rights in registered and unregistered designs There are currently no proposals to change domestic law relating to registered and unregistered designs in the UK, and therefore the acquisition of UK-only protection for new designs and the enforcement of such rights in relation to existing designs will be unaffected. Unregistered designs are protected in the UK by design right which, subject to certain qualification criteria, subsists automatically. The extent of protection afforded by design right is limited compared to registered designs in a number of ways. First, the protection is essentially concerned with the shape and configuration of articles and matters such as surface decoration and texture are excluded from protection. Second, design right provides protection against copying, whereas registered designs are monopoly rights which can be infringed even if the infringing article was independently designed. The term of design right is also shorter than for registered designs. UK registered designs are obtained by filing an application with the UK Intellectual Property Office. The process is quick and inexpensive. Registered design protection can last for up to 25 years. Furthermore, the UK will remain a member of the Paris Convention, which underpins intellectual property protection around the world. As such, it will remain possible for designers who have filed for registered design protection in the UK to subsequently claim the priority of that application for a design registration in the EU (or elsewhere) and vice versa. EU design rights The position in relation to the acquisition and enforceability of EU design rights (known as registered and unregistered Community designs) in the UK following Brexit is more complicated. The EU s position regarding Community intellectual property rights is that the holders of any such rights should not lose protection in the UK by reason of Brexit and that the UK should accordingly provide for the holders of Community rights to be given equivalent UK rights on Brexit. Their position paper provides: The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law The UK may well be of much the same view, at least in principle, but it is not known precisely what form these new UK rights

4 may take, what their duration would be, or whether there will be any associated costs for holders to those rights. The intention of the UK government s proposed EU Withdrawal Bill is to import all EU law in existence on the day before Brexit into domestic UK law. EU design law is established by an EU regulation, which would accordingly become part of UK law. This could mean that existing EU registered and unregistered Community designs will continue to be recognised and enforced by the UK courts. However, there will be anomalies, such as the qualification criteria (see below) and the basic fact that this regulation provides for EU-wide rights which will be incompatible with the UK s future status as a non-eu country. The EU Withdrawal Bill proposes that the UK government will be able to amend UK law to correct any such legal gaps, which may provide a solution. Alternatively, it may be that the EU designs regulation will be repealed on Brexit, in which case some kind of transitional provision will be needed. EU registered designs For existing EU registered designs, known as registered Community designs, one possibility is that design owners will be permitted to split their EU registered Marks & Clerk s international network, including offices in France and Luxembourg, ensures that we will continue to be able to represent our clients before the EUIPO. designs into a UK-only registration and an EU-only registration, or this may happen automatically. Proprietors may perhaps be able to choose whether to retain protection in the UK depending upon their requirements. However, no one can be certain that this will be the case. In light of the uncertainty, it has been reported that UK Registered Design filings increased by 95% in August 2016 compared with August Many designers are applying for both UK and EU registered designs. For the time being this would appear to be the safest option for designers until future provisions become clearer. This is even more attractive given that the UKIPO has recently reduced its filing fees for UK registered designs. For future registered design applications, UKbased applicants should by the time of Brexit be able to take advantage of The Hague Agreement, the international system for registered design applications which the UK government intends to ratify by April 2018 and which will enable applications to be filed covering both the EU and the UK (as well as other members of the Hague Agreement). In terms of registering a registered Community design, the rules of the EU Intellectual Property Office (EUIPO) require that if an applicant does not have their domicile, principal place of business or a real and effective industrial or commercial establishment in the EU, then they require professional representation. Marks & Clerk s international network, including offices in France and Luxembourg, ensures that we will continue to be able to represent our clients before the EUIPO.

5 EU unregistered designs The most significant differences between UK and EU design law can be found in the field of unregistered design rights. Under the EU designs regulation, rights in unregistered Community designs subsist automatically for up to three years from the date on which the design is first made available within the EU. The scope of this protection is limited to copying but it covers the same design aspects as registered Community designs, including surface decoration. Post-Brexit, if EU design law in the UK is repealed in its entirety, the unregistered protection afforded to design owners will be more limited, in particular, it will no longer be possible to obtain unregistered protection for surface decoration. This could have a big impact in the fashion and furniture sectors. For commercially valuable designs, and in particular for designs which rely upon surface decoration, in order to avoid missing out on protection it would seem that the safest option for designers is to cover their designs with UK registered design applications. For designers who still wish to benefit from unregistered protection in the EU, it is worth noting that there is some legal debate over whether a design that is first published outside of the EU can benefit from unregistered Community design protection. Designers should therefore consider targeting the initial publication of their designs at EUbased customers and traders, rather than principally targeting the UK. Given the relatively low cost of applying for registered designs, in the short term designers can put themselves in the most secure position by filing registered design applications in both jurisdictions. amended to remove the right of EU residents to obtain unregistered design right in the UK. Until negotiations regarding the UK s departure from the EU have progressed further, it will not be possible to determine the full impact of Brexit upon design protection in the UK. Designers wishing to adopt a more lean filing strategy may consider applying for EU design protection only, as it would seem unlikely that existing EU design registrations will be denied the possibility of being splitoff into an additional UK registration, though this possibility cannot be excluded. However, given the uncertainties surrounding unregistered design rights in both the UK and the EU, designers may wish to consider applying for registered protection in one or both territories for potentially valuable designs, rather than being reliant on any such automatic unregistered rights, especially given the relatively low cost of applying for registered designs. Conversely, it should be noted that an unregistered design right in the UK is only available to qualifying individuals, the definition of which currently covers all EU residents. It may be the case that UK law is

6 Marks & Clerk advises on all aspects of intellectual property. If you have any questions regarding the impact of Brexit on your intellectual property rights, please contact your usual Marks & Clerk advisor or, alternatively, you can direct your question to the chair of our Brexit committee, Graham Burnett-Hall. Graham Burnett-Hall Partner Solicitor Visit the Brexit section of our website for further information at com/home/knowledge-news/special- Articles/Brexit.aspx Marks & Clerk is recognised as one of the world s leading intellectual property firms. The firm s patent and trade mark attorneys, solicitors and consultants offer clients a comprehensive range of intellectual property services covering patents, trade marks, designs and copyright. This includes obtaining protection worldwide, portfolio management, strategic and commercial advice, licensing, enforcement, due diligence and litigation. Marks & Clerk has expertise in a wide range of commercial sectors and technologies. With a global network of 16 offices, in the UK (across eight cities), continental Europe, North America and Asia, and long-established relationships with other leading IP firms worldwide, the firm is able to meet clients IP requirements on a local and global basis. This publication aims to provide general information on Brexit and intellectual property. It does not constitute legal advice Marks & Clerk Properties Ltd Marks & Clerk is a registered trade mark.