Brexit: draft agreement signals welcome IP news for designers

Out-Law News | 17 Jun 2020 | 1:39 pm | 2 min. read

Designers will not have to choose between intellectual property (IP) protection in the UK or EU if the UK's proposals around unregistered designs are accepted by EU negotiators in the ongoing Brexit talks. The design industry in the UK will welcome this development as there have been fears that the domestic design market may be overlooked in favour of the EU market from the end of this year, according to an IP law and brand protection expert.

Florian Traub of Pinsent Masons, the law firm behind Out-Law, was commenting after the UK government published a draft comprehensive free trade agreement in which it set out its latest position in the current Brexit negotiations on IP rights and mainly restated its position in other areas. Article 24.28 deals with unregistered designs and proposes that, at the end of the transition period, disclosing a design in the EU or UK will satisfy the disclosure requirement for the purposes of creating an unregistered Community design in the EU and a supplementary unregistered design right in the UK.

Traub Florian

Florian Traub

Partner

If the proposal is accepted, there would be a clear change in the existing legal position

Traub said: "This proposal suggests the UK government has recognised the need to take steps to avoid a situation in which designers regard the EU as the key market to focus on at the end of the Brexit transition period, scheduled to expire on 31 December this year. If the proposal is accepted, there would be a clear change in the existing legal position and this would be welcomed by the design industry both in the UK and EU."  

Currently, case law provides that disclosing a design outside the EU undermines the novelty of that design for the purposes of unregistered Community design right protection in the EU. At the end of the transition period, the UK will become a 'third country' for the purposes of the EU market. First disclosure of a design in the UK will result in the design being protected in only the UK by a supplementary unregistered design right.  However, additional protection by an unregistered Community design in the EU would not then be possible as the UK disclosure would undermine the design's claims of novelty in the EU market.

Concerns have been raised by the design industry that, at the end of the transition period, designers would opt for the EU wide protection offered by an unregistered Community design in preference to a right providing protection only in the UK. Campaigners say the result could be the demise of the UK design industry and that high profile events, such as London Fashion Week, are put at risk.

Under the government's new proposals, first disclosure of a design in the UK would result in protection of the design in the UK by a supplementary unregistered design right. The novelty of the design would not be undermined for the purposes of obtaining an unregistered Community design covering the EU, which would be available in addition. The opposite would also be the case in respect of first disclosure of the design in the EU. This opens up the possibility for unregistered design protection in both the UK and EU.

"The government has not provided any explanation of the draft agreement," Traub said. "However, a literal reading of Article 24.28 suggests both rights would arise simultaneously on first disclosure of the design in either the UK or EU. Whether that is what the government intends, and whether that would be acceptable to the EU, remains to be seen."  

An unregistered Community design protects the appearance of a product, including its colour, shape, texture and ornamentation. The right arises automatically when the product is first disclosed in the EU and prevents competitors from copying the design for three years afterwards. The design must be 'novel' meaning that a design which "does not produce on the informed user a different overall impression" must not have been made available to the public already.  The right protects the design across all member states of the EU.

At the end of the transition period, the unregistered Community design will no longer cover the UK. In the UK it will be replaced by the supplementary unregistered design right which mirrors the unregistered Community design. However, the supplementary unregistered design right will only provide protection in the UK.