Keep calm: the Brexit and designs

brexit-referendum-uk-1468255044bIXWhile the impact of the Brexit on intellectual property rights is still uncertain, the state of designs is similar to that of trademarks in various ways, but some differences still exist.

The mechanism of the exhaustion of rights applies in the same way to trademarks and designs. The scope of the applicability of the exhaustion mechanism clearly depends on the decision of the United Kingdom to be a party to the EEA or not. Currently, once a good has been put on the EEA market with the consent of the rights holder, the rights relating to the designs are “exhausted”, meaning that the rights holder can no longer oppose its free circulation in the domestic market. Therefore, once the United Kingdom leaves the EU, the principle of the exhaustion of rights will no longer apply to the first goods marketed in the United Kingdom. If the United Kingdom decides not to be a party to the EEA, the government may still decide to apply the principle of international exhaustion, according to which the rights are exhausted when the good has been sold in any country.

While a mechanism of conversion of European trademarks and of RCDs would most certainly be implemented, the consequences are not the same for the European Community trademarks and designs. Such a mechanism does not currently exist for designs.

Furthermore, unlike trademarks, the designs do not involve any consequences in relation to the revocation for non-use.

It is to be noted that national British designs do not provide the same protection as RCDs. In fact, British designs do not protect the product’s decoration. Further, British titles do not have to fulfil the novelty criteria (the criteria is that of originality, meaning that the design must not have been copied or must not be similar).

Finally, a design can be registered in the United Kingdom even though it is functional.

The unregistered community design (UCD) makes it possible to enjoy protection when marketing a design without registering it .

Designs disclosed for the first time on the European Union territory (as of March 6, 2002), enjoy protection status. This protection lasts 3 years from the date that the design was first disclosed on the European Union territory. It is applicable only if the first disclosure occurs on the European Union territory.

Therefore, will a disclosure in the United Kingdom deny protection of unregistered community designs (UCD)?

It is necessary to provide legislation on this subject in order to define the limits of the protection of UCDs in the United Kingdom for the forthcoming years.

Once the exit of the United Kingdom from the European Union is finalised, community designs will no longer cover the United Kingdom. As advised in our previous article relating to trademarks “Brexit: facing the consequences”, if the United Kingdom represents a significant market for your company, it is advisable to register a British design in addition to a RCD.

Dreyfus & associés can assist and advise you on the best strategy to enhance and protect your rights.