Registered Community Designs and Brexit

The UK will complete its exit from the EU at the end of December 2020 when the transitional provisions expire.  The main impact on IP will be the UK ceasing to be a member of the EU-IPO meaning Registered Community Designs and Community Trade Marks will no longer have effect in the UK.  Patents are not affected as the European Patent Office is not an EU organisation.  This note summarises some of the key elements of the changes for Registered Community Designs.

Re-registration

All Registered Community Designs in force at the end of December 2020 will be re-registered by the UK Intellectual Property Office as an equivalent UK right such that the geographic scope is retained. The filing, priority, and registration dates of the Registered Community Design will be retained.  The existence of the two rights will mean the geographic scope of protection remains unchanged, but there will be some impact on portfolio management as two registrations need to be maintained.  It is possible to opt-out of the re-registration process, but only after 1 January 2021.  Opting out will mean the UK registration is deemed never to have existed.

The re-registered designs will retain their existing registration number, but prefixed with a '9'.  For example, 004048098-0004 will become 90040480980004.

Pending Applications

The re-registration process only applies to designs which have completed the registration process. Any applications not yet registered will not be re-registered, and also will not provide protection in the UK. Care therefore needs to be taken with applications filed close to the end of 2020 or those that are taking longer than normal to process at the EU-IPO (for example where objections were raised). 

Deferred Publication

Particular attention needs to be paid to Community Designs where publication has been deferred (which is possible for up to 30 months) since when those designs publish they will not cover the UK & will not be re-registered, but it is likely the priority and grace periods will have expired. For such cases it will be possible to file a new UK registered design up to 9 months from the end of the transitional period (up to the end of September 2021) and retain the priority and filing dates of the Community Registered Design.

The UK-IPO will allow publication of the UK design to be deferred, but only until the earliest of the end of the Community Design deferment, or 12 months from the date of filing the new design in the UK.

Representation

UK Representatives will not be able to practice at the EU-IPO after 1 January 2021 and hence a new agent may need to be appointed.  No action will be required for Simmons & Simmons clients as we have experts in many European countries who will continue to handle all Registered Community Design matters entrusted to our firm.  We will ensure a seamless transition such that no action is required.

Renewal fees

After 1 January 2021 separate renewal fees will be due for the existing Registered Community Design and the re-registered UK design.  The renewal dates will be the same for both designs.  Paying a renewal fee early on a Registered Community Design which expires after 1 January 2021 will not renew the re-registered design - the fee for the UK design must also be paid (after 1 January 2021).

Where a design is due for renewal in the first 6 months of 2021, and the fee is not paid prior to expiry, the UK-IPO will send a letter indicating the re-registered design has expired and noting that renewal is possible within 6 months of the expiry date.  For such designs, no additional fee for late-payment will be due.

For designs expiring after 1 June 2021, the usual renewal rules will apply such that renewal fees can be paid up to 6 months after expiry with a surcharge, and the UK-IPO will send a reminder prior to the expiry date.

Where a Registered Community Design expired before 1 January 2021 if that Design is subsequently renewed at the EU-IPO a corresponding re-registered right will be created by the UK-IPO as if the registration had always been in force. There are further provisions regarding re-instated designs, which should be considered on a case-by-case basis.

New Applications

After 1 January 2021 it will be necessary to apply at both the EU-IPO and the UK-IPO to obtain the same geographic coverage.  Also, where a registration will not be completed before the end of 2020 a UK registration should be filed as well. Community Designs register quickly, so early December should be a reasonable cut-off for starting to consider a UK registration.

The UK rules are extremely similar to those of the EU-IPO and so no changes or additional information should be required compared to those usually provided for Registered Community Designs.  Also, the UK fees are very low (£60 for the first design, £40 for each additional design) and so there will be a minimal increase in cost. However, it would still give a small cost saving if designs are filed prior to the end of 2020.

Summary

Overall for designs that are already registered minimal action should be required.  There is no change to the existing Registered Community Design (other than loss of the UK) and a UK re-registration will be created automatically.  It will be important to ensure the re-registered designs are created in your records systems and with your renewal providers, but most systems and providers are performing this as an automatic service.

After 1 January 2021 it will be necessary to file both a Registered Community Design and a UK Registered Design to retain the same geographic scope of protection.  Since the rules are so similar there should be no change in the details or instructions required for your attorney to complete the registrations.

If your designs are registered with us we will ensure a smooth transition of all matters to our EU-based teams and will be in touch personally to confirm the status of this process. We can also support all proprietors in the transition to an EU-based representative and management of UK re-registered designs.