Post Brexit: designs
To help businesses prepare, the UK Parliament has drafted legislation (The Trade Marks (Amendment etc) (EU Exit) Regulations 2018) that will ensure that EU designs will continue to be protected and to be enforceable in the UK by providing an equivalent design registered in the UK. The legislation is likely to be passed and will come into force on the date the UK exits the EU, whenever that may be.
Registered Community designs
The UK Government has confirmed through proposed legislation that it will ensure that an equivalent enforceable registration will be provided for existing registrations which are fully published. The above proposed legislation will also apply to international (Hague) design registrations on the exit date, which designate the EU, and which are published and deemed accepted by the EUIPO. The creation of the equivalent design registration in the UK will be at minimal administrative burden. The registered owner will be informed that a UK right has been granted, but will have the option to opt out.
Pending registered Community designs
For Community designs which are pending at the time of the actual exit from the EU, or which are registered but not yet published (as a result of deferred publication), the UK Government has proposed legislation which will provide an option for the applicants to apply for the same protection in the UK within a period of nine months from the exit date, maintaining the date of filing (and, it is anticipated, priority) of the EU application. This proposed re-application process will also seemingly apply to international (Hague) design registrations on the exit date, which designate the EU, and which are either unpublished; still at the application stage; or which are not yet deemed accepted by the EUIPO.
Unregistered Community designs
The UK Government has confirmed that any unregistered Community design right arising before the exit date will continue to be valid for the remaining period of protection. In addition, the UK is proposing a “supplementary unregistered design right” which mirrors the features of the unregistered Community design; this is a welcome proposal as it should mean that design features including surface decoration (for example, 2D logos) can be protected under unregistered design law in the UK going forward.
New UK registered designs
It has been made clear that the filing of a new UK trade mark or design application, in the designated nine month period, will be at the usual cost and subject to the usual application processes in the UK.
Customs applications for action (AFAs)
UK national and EU Customs AFAs granted by the Customs authorities in the UK will continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state will no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU post Brexit.