Although the UK has officially left the EU, there is a transition period until the 1st January 2021 after which changes to EU design law will come into effect.
For design application made after the 1st January 2021, if protection in the UK is desired, a separate UK registered design application will be needed since an EU design application will not cover the UK.
Where UK protection is desired for design applications and registrations created before the 1st January 2021 the below applies:
EU Registered Design Status
1. In force EU designs:
Any in force EU design will automatically be replicated as a national UK design called a “re-registered design”. This “re-registered design” will keep the priority date of the EU design and will be treated like any other UK registered design. There is no cost to the design holder for this replication.
No action required
2. Pending EU design applications:
An EU design application that is still pending after the transition period has passed will not automatically be duplicated into a UK design application. Instead the design holder will need to file a UK design application within 9 months from the end of the transition period. This design application will be treated as a normal UK design application except that it will retain the earlier EU design application filing date as long as the applications relate to the same design.
Action: File a UK design application within 9 months from the end of the transition period.
3. Expired EU designs:
An EU design that expired between 1st July 2020 and 1st January 2021 will also be replicated as a “re-registered design” and will hold an “expired” status. If the EU design holder pays late renewal fees in respect of the EU design, the re-registered design will be automatically renewed without any renewal fees due at the UKIPO. On the other hand, if late renewal fees in respect of the EU design are not paid, the re-registered design will be removed from the UK registered and treated as though it never existed.
Action: Pay late renewal fees in respect of the EU design to the EUIPO.
4. Deferred EU designs:
Where an EU design holder has requested that publication of the design is deferred and the deferral is ongoing, the deferred EU design will be treated as being equivalent to a pending application and will follow the procedure set out in 2 above. However, unlike for a pending EU design application, the replicated UK design application will not be examined since the design has already been examined by the EUIPO.
Action: Follow procedure set out in 2 above.
5. Reinstated EU designs
An EU design that has lapsed may be reinstated within 1 year of the missed deadline. If, after the end of the transition period (1st January 2021), an EU design has been reinstated, the EU designs holder can notify the UKIPO and they will create a re-registered design.
Action: Notify the UKIPO of reinstatement of the EU designs.
6. Reinstated EU design applications
If, after the end of the transition period (1st January 2021), an EU design application has been reinstated, the procedure set out in 2 above can be followed.
Action: Follow procedure set out in 2 above
Opting out
Any EU design holder can write to the UKIPO to opt out of having a replicated re-registered design. This should be done using the appropriate opt out notice template and the EU design number in question must be provided. Opt outs are not possible until after expiry of the transition period (1st January 2021).
Renewal Fees
Once re-registered designs (without expired status) are created, these designs will have separate renewal fees to their EU counterparts. These separate renewal fees are to be paid to the UKIPO. As with regular UK registered designs, the re-registered designs can be renewed every 5 years for a maximum of 25 years.
Mohun Aldridge Sykes
30th December 2020
