Post Brexit designs refresher: five important changes and a noteworthy action point for August 2021
The United Kingdom completed its departure from the European Union (EU) when the Brexit transition period ended on 31 December 2020, and this event caused changes to kick in as regards design law and procedure in the UK. In this article we provide a refresher of five of those changes, and some action points that arise from them.
1. Numbering of cloned UK designs
On 01 January 2021 the United Kingdom Intellectual Property Office (UKIPO) embarked on the task of creating so-called “re-registered” UK designs (more conveniently called “cloned” UK designs) that replicate, in the UK, the UK component of any EU-wide design that ceased to provide protection in the UK at the end of the Brexit transition period.
To assist with distinguishing between the different types of cloned design, for a cloned UK design derived from an international design that included an “EM” designation covering the EU, the number allocated by the UKIPO begins with an “8”. For a cloned UK design derived from a registered Community design (RCD), the number allocated by the UKIPO begins with a “9”.
2. Address for service for cloned “9”-series UK designs – based on an RCD
The UKIPO will, in the first instance, have carried over onto the UK Register as representative (as “address for service”) the representative that was listed by the EUIPO against the original RCD. Thus, foreign attorney firms (in the remaining 27 member states of the EU) will initially find themselves on the UK Register as address for service, and may start to receive official letters from the UKIPO relating to events concerning the relevant cloned UK design, such as the need to pay an upcoming official renewal fee, or that the renewal fee is overdue.
As a practice point, these attorney firms should consider instructing a UK attorney firm to take over responsibility by recording themselves on the UK Register as a replacement address for service, so that the UK firm can receive the official letters and report them to the EU27-based attorney firm.
3. Address for service for cloned “8”-series UK designs – based on an international design
The original international (Hague) design with its “EM” designation covering the EU may have been filed by an attorney firm based in many countries of the world, including Japan and the US. When the international (EU) design was cloned onto the UK Register, the cloned UK design would have been set up by the UKIPO as having the original (for example, Japanese or US) attorney firm as address for service, for the purpose of receiving official letters from the UKIPO. For a US attorney firm, an official letter received directly from the UKIPO would be unexpected, and it might be dismissed as spam or otherwise overlooked. For a Japanese attorney firm, the official letter (being in English) might be even more likely to suffer this fate. Thus, again, as a practice point, these attorney firms should consider instructing a UK attorney firm to take over responsibility by recording themselves on the UK Register as a replacement address for service, so that the UK firm can receive and report the official letters.
4. Action in the UK regarding “pending” RCD and international (EU) design cases
Where an RCD or International (EU) design was “pending” (not yet fully granted and fully published) at the end of the Brexit transition period, no cloned UK design will have been created by the UKIPO.
There is a one-off special “window of opportunity” to file a UK design application equivalent to the RCD/international filing, and the UK design application must be filed by 30 September 2021.
Rather than wait until September, we advise instructing your UK design attorney firm to file such “re-filed” UK design applications by the end of August 2021 to ensure the due date is met well in advance of the deadline, and to avoid any possible issues that may arise due to a large wave of “re-filings” during September.
5. Possible change to exhaustion of IP rights in the UK
Post Brexit, there is currently an asymmetric regime in relation to exhaustion of IP rights as regards (a) imports into the UK from the European Economic Area of legitimate, non-counterfeit goods and (b) exports from the UK to the EEA.
In relation to imports into the UK, exhaustion of IP rights is considered to have occurred when the goods were legitimately placed on the market in the EEA. In relation to exports from the UK, exhaustion is not considered to have occurred as a result of legitimate placing on the market in the UK, and the goods may still be IP-protected in the EEA. However, the UK Government is currently conducting a public consultation as to the future regime in the UK as regards exhaustion, and one outcome may be that the import situation will be amended to mirror the export situation.