Location of First Disclosure Crucial for Unregistered Design Rights
While the end of the Brexit transition period has seen the creation of UK equivalents for registered EU IP rights, going forward the location of first disclosure of a product will determine whether UK or EU unregistered design rights can be obtained.
UK unregistered designs only protect shape and last the lesser of ten years from the end of the calendar year in which they were first made available or fifteen years from the end of the calendar year in which they were first recorded in a design document. Unregistered community designs (UCDs) protect many aspects of a product, including colours, patterns, logos and material and last three years from their first disclosure.
Prior to the end of the transition period if the first disclosure of a product occurred within the UK it would qualify as both a UK unregistered design and as a UCD. UCD rights existing at the end of the transitional period will continue to be recognised as UCD rights in the UK for their remaining EU term (maximum 3-years) and will be known as a continuing unregistered design.
Following the end of the transition period first disclosure of a product within the UK no longer qualifies as a UCD. However, from 1st January 2021 a UK-only equivalent of the UCD has been enacted and is known as a Supplementary Unregistered Design (SUD). Hence, the first disclosure of a product within the UK now qualifies as a UK unregistered design and as a SUD. Importantly though, such first disclosure in the UK can be invalidating for a UCD and vice-versa if the first disclosure is in the EU. In the case of simultaneous first disclosure in both the UK and the EU it appears that neither would invalidate the other, but the specifics of the disclosure may make it arguable that it was disclosed towards one of those jurisdictions and not the other.
UK unregistered designs can only be obtained by qualifying persons, who are deemed to be either a person who habitually resides in a qualifying country or a legal entity that is formed in and carries on substantial business in a qualifying country. From 1st January 2021 EU member states were removed from the list of qualifying countries, which now consists of the UK, New Zealand, Hong Kong and various overseas territories and dependencies.
While UK unregistered designs only protect shape, on a less is more basis this can give them broader protection than a UCD or SUD in which protection is limited to the combination of design attributes. Hence, for a UK unregistered design the court would not take into account differences in material, colour or patterning when deciding whether infringement has occurred. Although UK unregistered designs last significantly longer than a UCD or SUD, during the last 5-years of their duration they are subject to licences of right.
Author: Quinn Miller