Brexit and registered designs: invalidating the clones…
With less than a month to go until the end of the transition period concerning the departure of the United Kingdom from the European Union, the start of 2021 will herald the arrival of a host of new UK registered designs which will originate from their respective underlying EU design registrations. But what happens if action is needed to invalidate one of these newly created, cloned, UK design registrations?
In the above respect, for a previously held EU design registration covering the UK, to try get rid of, or "invalidate", this design registration, it was necessary to file an invalidity application at the EUIPO, which is the entity that is responsible for handling EU design registrations. From 2021 however, any new invalidity action made before the EUIPO in respect of an EU design registration will not directly result in any corresponding invalidity of the cloned UK design registration covering the UK.
Instead, for those seeking to invalidate one of these cloned UK registered designs going into 2021 and beyond, the forum for pursuing such an invalidity action will principally be before the UK Intellectual Property Office (UKIPO), which is the entity that handles UK design registrations.
In terms of the key facts and figures for pursuing a design invalidity action before the UKIPO:
Is there an official fee payable to invalidate a UK design registration?
Yes. Currently a nominal fee of £48.
How long does an invalidity action before the UKIPO take?
Whilst the exact time will depend on the facts of any given case, a typical registered design invalidity action before the UKIPO may take around 12-18 months from the start to finish.
How is the invalidity action carried out?
The process typically commences with written correspondence/pleadings from both parties. An oral hearing can then also be requested, if required. Following these submissions, a written decision will then ultimately be issued by the UKIPO confirming the outcome of the invalidity action.
Are costs recoverable?
In principal yes, with the successful party from the invalidity action often eligible to recover a (usually modest) proportion of their costs from the losing party.
Is there a route(s) of appeal?
Yes, there are two routes to appeal a registered design invalidity decision from the UKIPO. The first route of appeal is before the "Appointed Person", whose decision ultimately then becomes final. The second route of appeal is before the UK High Court (or Court of Session in Scotland), whose decision may be further appealed in certain circumstances.
For the sake of completeness, it is to be noted that the above situation will apply for any invalidity action which is filed from 2021 onwards. That being said, in respect of any EU design registration which is already the subject of pending/ongoing invalidity proceedings before the EUIPO at the end of 2020, the current position is that the fate of any cloned UK design registration relating to the EU design registration will reflect the outcome of the invalidity proceedings before the EUIPO. Accordingly, if the invalidity proceedings before the EUIPO are successful such that the EU design registration is invalidated, this may well result in the corresponding cloned UK design registration also being invalidated without the need for a separate set of invalidity proceedings before the UKIPO.
Mindful of this, for those potentially seeking some registered design clearance in the UK going into 2021, and which is in respect of any EU design registration which is currently in force, there may be a strategic interest in filing an invalidity action in respect of this EU design registration at the EUIPO before the end of 2020. That being so, now is the time for such an invalidity action to be initiated! In case such an invalidity action is required, the official fee payable to the EUIPO for pursuing such an action is EUR 350. Once initiated, and as with an application for the invalidity of a UK design registration before the UKIPO, an invalidity action before the EUIPO typically commences with written arguments from both sides. Once these written proceedings are complete, the EUIPO will then ultimately issue a written decision confirming the outcome of the invalidity action. Any such decision, as well as being open to an appeal before the EUIPO Boards of Appeal if required, also typically allows the successful party to a recover a small portion of their costs from the losing party.
So the take home message at this time? The landscape for invalidating design registrations in the UK going into 2021 is ultimately set to change, with the expectation of more invalidity actions being pursued before the UKIPO going forwards. For those considering any last minute invalidity actions before the EUIPO, there is still just about enough time to submit such an action before the end of the year, noting such actions (if ultimately successful) may result in the invalidating of not just the EU design registration, but also potentially any newly cloned UK design registration deriving from the same going into 2021 and beyond.
Appreciating the foregoing, for those contemplating any registered design invalidity action before either the UKIPO or the EUIPO, do get in touch with the team at D Young & Co LLP who would be pleased to advise. In that respect, our extensive experience before both these design registries makes us extremely well placed to suggest a winning strategy in respect of the same.
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Webinar - Brexit & designs
First broadcast 24 August 2020, Richard Burton discusses the context and effect of Brexit on design rights, including what will happen at the end of the transition period (01 Jan 2021). The webinar includes a run through D Young & Co's practical Design Brexit Checklist for what to consider before and after the end of 2020. Richard also looks at the effect of Brexit on unregistered design rights and issues of disclosure and considers filing strategies.View webinar