The general principle for any documents dated before the end of the Transition Period referencing an existing RCD will be read after the end of the Transition Period as also referencing the re-registered design, which is derived from the existing RCD.
Practice Point: Check with the relevant person if you have any agreements that refer to RCDs that you do not want to refer to the re-registered design after the end of the Transition Period. If there are any, take appropriate steps to make it clear that these documents should not also include the re-registered design unless it is not already clear from the document – i.e. if, for example, the document specifically excludes the UK.
In pending proceedings before the UK courts which involve an existing RCD, then the court may injunct/revoke as applicable the re-registered design. This gives discretion to the court not to do this where it would not make sense to.
Practice Point: If you have any pending actions before the UKIPO/UK courts, you might want to check what basis these have been made on and prepare in readiness if it is possible that the UKIPO/ UK courts could exercise discretion in this area.
In the case of an expired existing RCD, where the renewal fee was not paid but there is still some or all of the six-month grace period in which to pay the renewal fee late, a re-registered design will be created with the status of expired. If the late renewal fee is then paid on the existing RCD, the UKIPO will change the status of the re-registered design accordingly. If the late renewal fee is not paid the re-registered design will be removed from the register.
Practice Point: If any existing RCDs are renewed late the applicant is not required to notify the UKIPO, however, we would suggest that a note is made to check that the status of the re-registered design is updated accordingly.
In the case of an existing RCD undergoing restoration, a re-registered design will not automatedly be created at the end of the Transition Period. However, once the existing RCD is restored the UKIPO will create a re-registered design if the UKIPO is informed within six months of such restoration by emailing [email protected].
Practice Point: If any existing RCDs are restored and a re-registered design is required then make a diary note to contact the UKIPO in relation to the same within six months of the restoration taking place.
EU Designations of International Designs
As indicated above if there is no future economic agreement at the end of the Transition Period that supersedes the Withdrawal Agreement, the UKIPO will create a “re-registered international design” on the UK register which will be derived from the corresponding EU designation where a statement of grant of protection has been granted. The re-registered international design will have the same number as the corresponding EU designation, but will be given a different prefix (The number allocated to the re-registered international design will consist of the full IR (EU) number (without the D) prefixed with the digit 8).
Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate Registered EU designations of International Designs on your records, and create a new record for the re-registered international design. You might want to run this in a test environment to look for any unexpected wrinkles ahead of time.
The re-registered international design will have the same details as the corresponding EU designation, including the same expiry and renewal date, as such all the information provided above in relation to the EU Designs is equally applicable to EU Designations of International Designs.
Practice Point: The re-registered international design created will be independent of the remainder of the International Design and once created will need to be actioned, for example renewed, separately and directly at the UKIPO.
Practice Point: Unlike with RCDs if an International Design is late renewed the re-registered international design will not automatically have its status updated and holders must inform the UKIPO that their corresponding International Registration has been late-renewed at WIPO by sending an email to [email protected]. The email must be submitted within nine months of the end of the Transition Period.
Pending Registered Community Design (RCD) Applications
Any pending RCD applications at the end of the Transition Period will not automatically have a comparable re-registered design created, and it will be necessary to re-file the application at the UKIPO within a nine-month window following the end of the Transition Period, to claim the same filing, priority, etc, dates as the pending RCD application. This includes RCDs that have been accepted and where publication has been deferred and pending RCD applications restored after the end of the Transition Period, but not refused RCD applications. It will be possible to claim deferred publication of the new UK filing for the term remaining on the corresponding RCD (where deferred publication was requested on the corresponding RCD) up to a maximum of 12 months.
Practice Point: Check any pending RCD applications that have not been “entered into the register and published”. Consider requesting publication before the end of the Transition Period if it need not be deferred – publication normally takes place within a couple of weeks, so there may just be time. Also check any pending RCD applications that you have at the end of the Transition Period and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this.
It is likely that, if there is no future economic agreement, any applications you file close to the end of the Transition Period at the EUIPO will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a future economic agreement or extension of the Transition Period. We would therefore suggest, given the nine-month re-filing would have the same date as the RCD application, and cost the same regardless of when it is filed, it would be more cost effective, unless immediate action is required to be taken in the UK, to make use of this provision, or, in the event that the EU design is a first filing, to consider filing an ordinary priority-claiming application in the UK within six months (at the same time as any foreign applications). The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings.
Pending EU Designations of International Designs
Any pending EU designations of International Designs i.e. where a statement of grant of protection has not yet issued at the end of the Transition Period, will not automatically have a re-registered international design created, and it will be necessary to re-file the application at the UKIPO within a nine-month window following the end of the Transition Period, to claim the same filing, priority, etc, dates as the pending EU designation of the International Design.
Practice Point: Check any pending EU designations of International Designs, where the statement of grant of protection has not yet been issued, that you have at the end of the Transition Period and make a nine-month diary note to re-file these cases in the UK, if UK protection is required. Notify the relevant people of this. The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings.
Unregistered Community Designs (existing before the end of the Transition Period)
If there is no future economic agreement at the end of the Transition Period that supersedes the Withdrawal Agreement, the UKIPO will create a “continuing Community unregistered design” which will be derived from the corresponding unregistered Community design.
The continuing Community unregistered design will have the same details as the corresponding unregistered Community design including the same scope of protection and expiry date.
Unregistered Community Designs (after the end of the Transition Period)
After the end of the Transition Period, if there is no future economic agreement at the end of the Transition Period that supersedes the Withdrawal Agreement, designs first disclosed in the UK will be subject to a supplementary unregistered design, which as the same term and scope of protection as previous unregistered Community designs, but only in the UK. Designs first disclosed in the EU will be subject to Community unregistered design, but only in the EU and not in the UK.
Practice Point: Carefully consider as to where to first disclose designs, where unregistered designs are desired, to ensure that protection is obtained in the preferred jurisdiction.
Date published: 3 February 2020
