Brexit & EU registered designs - now is the time to apply!
There are now fewer than eight weeks to go until the end of the Brexit transition period, though there is still just enough time to squeeze through any required last minute EU registered design applications before the end of year, such to maintain free registered design protection in the UK in 2021 onwards.
To recap, at the end of 2020, only EU design registrations which are registered and fully published by the end of the year will be given a “free” corresponding UK re-registered design at the start of 2021. If the EU design registration is not registered and fully published by the end of 2020, corresponding UK design registration protection can ultimately be maintained through filing a new UK registered design application before the UKIPO in a special nine month re-filing window beginning 01 January 2021. In this latter case however, any such UK registered design application which is applied for will need to be made at cost, and by incurring the usual application fees payable to the UKIPO for filing a UK registered design application.
Mindful of the above, for any EU registered design application applied for in the coming week or so, there is still just enough time to have such an application pushed through to registration and publication before the end of this year. That being said, crucial in this respect will be in ensuring that no objections are raised by the EUIPO in respect of this application, which might otherwise slow down its registration and corresponding publication. Accordingly, below are a few quick tips to best ensure a fast, and objection-free, registration of an EU registered design application.
A powerful tool in the EU registered design application arsenal is the ability to control when the drawings from each design in the application are ultimately published. This control can be achieved by requesting deferred publication when the application is made.
Whilst in many instances requesting deferred publication can be of particular strategic importance, unavoidably, it is to be noted that if deferred publication is requested for any design(s) in an imminently filed EU registered design application, this will likely mean that each such design(s) will not be published before the end of the year. As such, free UK design registration protection for these EU design registrations going into 2021 will not be possible, such that for these designs it will be necessary to re-apply for the corresponding UK registered design application in the special nine month re-filing window beginning 01 January 2021 to maintain any registered design protection in the UK.
Use the “Fast Track”
For any EU registered design application which is applied for, there are two filing routes, namely the standard route or the Fast Track route. That latter route, as the name suggests, and for which there is no official fee payable, can greatly increase the registration speed of the application down to a day or so, compared with between one to three weeks for an application made under the standard route.
To best ensure any given EU registered design application is placed under the Fast Track route, the following criteria at least must be satisfied:
- Use one of the pre-authorised product indications as provided by the EUIPO: Each design from an EU registered design application is labelled with a corresponding product indication which, although not limiting on the scope of protection of the design, is used for bibliographic purposes to classify the subject matter of the design. On filing the application, for each design there is a choice to use one of the many pre-authorised product indications as provided by the EUIPO, or select a custom product indication. In the latter case, any such custom product indication will take the EU registered design application off from the Fast Track, and hence will slow down the registration of the application.
- Make sure any priority claim evidence is submitted on filing: If the EU registered design application contains a priority claim, make sure the evidence to support this priority claim is submitted on filing the application to best ensure a fast registration. If the priority design application was made before a design registry which participates in the WIPO DAS scheme, then do consider making use of this scheme to evidence the priority claim before the EUIPO, noting the EUIPO is also a participant of the WIPO DAS scheme. Further information in this respect can be found in our article "WIPO DAS & Designs: EUIPO is an office of second filing".
If the priority application is not in an office language of the EUIPO (these languages being English, French, German, Italian and Spanish), one should also ensure on filing the EU registered design application that a translation of the priority application is provided into one of these office languages.
If any of the above priority evidence is missing from the EU registered design application on filing, the application will definitely not be processed on the Fast Track, and an invitation will be issued by the EUIPO to furnish this missing evidence.
Triple check the provided views from each design are consistent with each other
Fast Track issues aide, it stands to reason that if there is an inconsistency between the views of a given design from the EU registered design application, this inconsistency may be the source of an objection from the EUIPO, which aside from potentially impacting the scope of any resultant EU design registration, will slow down any corresponding registration of the application.
Multiple designs - hedge your bets
One of the fantastic benefits of the EU design registration system is the ability to combine multiple designs into a single application, so long as the subject matter of the designs is sufficiently similar. That being said, as more designs are included into the application, this may increase the likelihood of receiving some sort of objection in respect of one or more of the designs from the application, which may then slow down the registration of the entire design family from the application.
Thus for particularly large EU registered design applications containing lots of designs, if there is “questionable” design(s) therefrom, which may be the source of an objection from the EUIPO, do perhaps consider pulling this design(s) out from the application, and re-pursuing it in a separate application. That way, the remaining designs will not be slowed down from a speedier registration.
A final cross check in respect of EU trade mark protection – brand owners take note!
For the sake of completeness, it is now not possible to have any imminently filed EU trade mark application pushed through to registration before the end of the year, which will necessarily mean that a corresponding UK trade mark application will need to be filed to ultimately maintain any such trade mark protection in the UK going into 2021.
That being said, for those with a logo or a figurative mark which also fulfils the criteria of being a registered design as well as a trade mark, for example, logos or figurative marks which have been publically disclosed for less than 12 months, as noted above the window for obtaining any corresponding EU design registration protection, in a way that will not require re-applying for a UK registered design application in the new year, is still just about open.
Thus alongside any contemplated trade mark protection for such a logo or figurative mark, do consider whether additional EU design registration protection may be advisable in the coming fortnight or so, noting such protection may represent excellent commercial value given it may then result in registered design protection covering both the UK and the EU!
The window for obtaining a registered and fully published EU design registration before the end of the year, such to provide for a free UK design registration in 2021, is closing fast…so act now before it finally shuts!
For those seeking to squeeze through some EU design registrations before the end of the year, do contact your usual D Young & Co advisor or a member of our design team as soon as possible. We would be delighted to advise.