PRACTICE GUIDANCE ON THE TRANSITION PERIOD IN THE WITHDRAWAL AGREEMENT - DESIGNS

Published: 3 February 2020
CIPA has updated its Brexit advice to members, prepared by Alicia Instone, CIPA Vice-President and Chair of the Designs and Copyright Committee with help from Julia Florence, CIPA Immediate Past President. 
The UK IPO have issued new guidance on intellectual property during the transition period. To find out more, click here. 
NB: The Transition Period is currently set to end on 31 December 2020.

Registered Community Designs – RDCs

During the Transition Period, it will be “business as usual” for RCDs before the EUIPO and EU Design Courts.

RCDs will be able to be filed at the EUIPO by the same people who can currently file RCDs at the EUIPO and they will be effective in all 27 Member States of the EU plus the UK. 

In addition, after the end of the Transition Period, the same representative who was able to represent during the Transition Period will be able to continue to represent in the matter in ongoing proceedings before the EUIPO (Article 97).

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 design” on the UK design register, which will be derived from the corresponding RCD. The re-registered design will have the same number as the corresponding RCD, but will be given a different prefix. The number allocated to the re-registered design will consist of the full 13-digit RCD number (without the – ) prefixed with the digit 9.

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 RCDs on your records, and create a new record for the re-registered design. You might want to run this in a test environment to look for any unexpected wrinkles ahead of time.

The re-registered design will have the same details as the corresponding RCD, including the same expiry and renewal date.

Practice Point: Check your records for any RCDs due for renewal in the six months post the end of the Transition Period. It will not be possible to renew the RCDs before the end of the Transition Period early to avoid having to pay two lots of renewal fees post the end of the Transition Period. Therefore, there may be renewal fees due on the re-registered design immediately after the end of the Transition Period, which you will not have been notified about in advance. However, there will be no late fees for the first six months. It may be that there is no intention to renew certain re-registered designs where there is already an “equivalent” earlier filed UK registered design.

The UKIPO has indicated that they will notify rights holders that a re-registered design has been granted by publishing a notification and guidance on their website.

Practice Point: This notification will simply be a general notification on the website of the UKIPO and individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding RCD. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the re-registered design initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct representative has been recorded on the re-registered design as address for service. Given that it is possible to “opt-out” of the re-registered design under certain circumstances, you will need to report to the relevant persons the creation of the re-registered design, and the possibility of opting out. It might be that an opt-out is required so as not to contravene agreements for example where one has agreed not to file in the UK. If an opt-out is required the request will have to be made after the end of the Transition Period, it cannot be made before.

Practice Point: If you have switched over representation on your cases at the EUIPO to an EU entity in preparation for the end of the Transition Period bear in mind that the address for service of the registered design will also be the switched over address and you will need to make preparations to switch these back if desired to your UK entity. CIPA is currently investigating with the UKIPO ways in which this might be efficiently achieved.

As well as creating re-registered design for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation.

Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the correct representative information might not be transferred onto the EUIPO register and there may be no representative details. Check the EUIPO register for your international cases and add yourself as representative where applicable, as the EUIPO does not automatically take this information from WIPO.

Where an existing RCD is the subject of a licence immediately before the end of the Transition Period and the licence does not expire at the end of the Transition Period then unless there is an agreement to the contrary, the licence will continue to apply to the re-registered design which derives from the existing RCD. In addition, for any licence that has been recorded on the EUIPO register there will be an additional 12 months to record the same licence at the UKIPO against the re-registered design. This means that sections of the act relating to licences being ineffective and licencees not having rights of remedy will not apply until 12 months after the end of the Transition Period, and costs awards will be allowed, provided that the licence is been recorded within 18 months (rather than six months) of the date of the licence.

Practice Point: Check your records/the records at the EUIPO for any cases in your care that have licences that have been recorded against them. This looks like it will be quite a manual exercise as the EUIPO does not appear to let you search for designs that have a licence recorded against them. However, you can carry out an advance search for designs which are registered, and for which you are the representative and then plod through the list checking the “recordal” section for licences. If anyone has found a better way, please do let us know. Then notify the relevant people that they have 12 months to re-record these licences at the UKIPO against the applicable re-registered designs.

The same is true for security interests, so you would want to check these as well.

Practice Point: As above for licences, check your records/the records at the EUIPO for any cases in your care for any cases that have security interests recorded against them. Then notify the relevant people that they have 12 months to re-record these security interests at the UKIPO against the re-registered designs.

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 information@ipo.gov.uk.

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 WIPOrenewaltrademarks@ipo.gov.uk. 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.