Brexit & EIP
European legislation created the EU Registered Design (“EURD”) which provides for the protection of a design for up to 25 years across the whole of the EU. To obtain pan-EU protection for a design only one central registration is required. To enforce a design in more than one member state of the EU, only one set of legal proceedings are required. This pan-European design protection operates in parallel to national design right protection (including UK Registered Design (“UKRD”)).
The scope of protection of an EURD is limited to the Member States of the EU. A post-Brexit UK government will need to enact appropriate transitional legislation to recognise the effect of existing EURDs in the UK or allow EURD holders to apply for a UK re-registration of the EURD while maintaining the original filing date (which would likely incur fees for the rights holder), to prevent a design that was formerly protected by EURD in the UK from losing that protection. If no such transitional legislation is created, a new filing in respect of the design in the UK is likely to be invalid because of the novelty requirement – the existing publication of the EURD (at least) will in most cases be novelty-destroying prior art. While we expect that suitable arrangements will be made for existing EURDs, we also expect an EURD granted post-Brexit to no longer automatically apply to the UK.
The changes to registered design protection in the UK gives rise to a number of considerations for rights holders:
Rights holders would need to supplement any EURD protection with a UK Registered Design.
Licence agreements covering the use of an EURD in the UK will need to be reviewed and potentially revised. A licensee might suddenly find itself without exploitation rights in the UK.
An order requiring an entity “not to infringe EURD No…” would no longer apply to activities in the UK.
An undertaking “not to infringe EURD No…” would no longer apply to activities in the UK.
By virtue of the EU Designs Directive, the provisions of UK legislation relating to the validity and scope of protection of a UKRD are harmonised with EU law regarding EURDs. UK courts and tribunals must (under EU law) interpret such provisions of UK legislation in line with the case law of the Court of Justice of the European Union (“CJEU”). It seems unlikely that a post-Brexit UK government would allow EU jurisprudence to affect the interpretation of UK law (unless this was a requirement of an EEA-type agreement entered into between the UK and the EU). As a result, the entire basis for the interpretation of the law of registered designs in the UK could disappear overnight with numerous cases having to subsequently pass before the UK courts post-Brexit before rights holders know how their designs will stand up to validity attacks and how UK courts will approach issues of infringement. More+