Changes to EU and international designs and trade mark protection from 1 January 2021
Last updated 26 February 2021
This guidance explains the changes to UK law as a result of the Withdrawal Agreement, that preserve existing design and international rights. It also covers other legislative changes required to effectively administer and implement the new rights.
Designs are a form of intellectual property. They protect the appearance of the whole or part of a product resulting from the features of, in particular, its lines, contours, colour, shape, texture, materials and ornamentation.
A design can be protected if it is new and has individual character compared to designs that are already in the public domain.
Trade marks enable consumers and businesses to differentiate the goods and services of one trader from another. They commonly take the form of words, logos, or a combination of both.
Trade marks are registered rights, with protection in the UK granted by the Intellectual Property Office (IPO), the European Union Intellectual Property Office (EUIPO), or via an international registration filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO).
Changes from 1 January 2021
From 1 January 2021, registered Community designs (RCDs), unregistered Community designs (UCDs), are no longer valid in the UK.
These rights have been immediately and automatically replaced by UK rights.
Before 1 January 2021, design protection could have been obtained via a registered right or an unregistered right in the following ways:
- a national registered design granted by the IPO of the UK
- a registered Community design granted by the EUIPO
- an international registration designating either the UK or the EU, filed under the Hague Agreement at WIPO
- unregistered protection can be obtained in the UK through the UK design right and the EU unregistered Community design
From 1 January 2021, any existing RCDs, UCDs, European Union Trade Marks (EUTM), and International (EU) designs and trade marks only cover the remaining EU member states.
Creation of the re-registered design
All registered and published RCDs have gotten comparable UK designs, which have been recorded on the UK register. These have been treated as if they had been applied for and registered under UK law.
The legislative changes introduced in the UK have ensured that the holder of an RCD is provided with an equivalent UK right. They have retained the registration and application dates recorded against the corresponding RCDs and have inherited any priority dates.
As fully independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD.
Re-registered designs will be created at no cost to the RCD holder, and we are ensuring that minimal administrative burden will be placed upon the right holder.
On 1 January 2021, there have been a small number of RCD applications that are still pending in the EU system.
If you have held a pending RCD application on 1 January 2021, you will be able to apply to register a UK design in the nine months after the end of the transition period, this being up to and including 30 September 2021 and retain the earlier filing date of the pending RCD
To do so, the UK application must relate to the same design as that filed in the pending RCD application.
If the details of the UK application do not match those of the corresponding RCD application, then the earlier EU date(s) will not be recognised.
The IPO's digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.
These applications will be treated as a UK registered design application. They will be examined under UK law. In these circumstances, the standard UK fee structure will apply.
Effect of priority claims
A priority date claimed under the Paris Convention that has been recorded against the corresponding RCD will be inherited by the re-registered design. The date of that priority claim will have effect where proceedings involve a re-registered design with a priority claim inherited from the corresponding RCD.
Pending invalidation actions at the EUIPO
Registered designs can be challenged by third parties under the grounds of invalidation. If this action succeeds, then the right is removed fully or partially from the register.
At the end of the transition period, IPO has created UK re-registered designs for all registered community designs (RCD'S) registered at 31 December 2020. This includes registered community designs that are subject to invalidation proceedings.
The Withdrawal Agreement requires that where a registered community design (RCD) is subject to ongoing invalidation proceedings at the end of the transition period, and is subsequently invalidated, the outcome shall be applied to the corresponding UK re-registered right.
This means that if you own a RCD that is subject to invalidation proceedings at the end of the transition period and that right is subsequently invalidated, whether wholly or partially, your UK re-registered right will also be invalidated to the same extent.
If you are a party that has succeeded in invalidating a RCD and this action was ongoing at the end of the transition period, the invalidation will be applied to the UK re-registered right, without the need for you to bring a new invalidation action before the UK IPO.
There is an exception where the grounds for invalidating the RCD would not apply in the UK. In this case the UK right will not be invalidated. This is referred to as a derogation.
All re-registered community designs which are subject to ongoing invalidity proceedings at the end of the transition period will be recorded on a dedicated list on the IPO website. When a final decision in the proceedings against the RCD is reached, meaning that no further appeals are possible, an invalidation notice may be sent to IPO by any person. IPO will also initiate the invalidation of a re-registered right or direct another party do to so if they become aware that the corresponding RCD has been invalidated.
If you are the owner of the re-registered design sending IPO an invalidation notice, and you wish to claim the derogation, you must send the derogation notice with the invalidation notice.
If a third party sends IPO an invalidation notice, IPO will send this to the owner of the re-registered design. If they believe that the invalidation should not apply in the UK, they must file a derogation notice within a period of one month following receipt of the invalidation notice. If IPO become aware that an EU right is cancelled, then IPO will write to the owner of the re-registered design and give them the same notice to file a derogation.
The IPO Tribunal will then decide whether or not the re-registered design should be invalidated in the UK. Some examples of how a derogation is likely to succeed or not succeed are set out below:
derogation is likely to succeed where the invalidation of a design on the grounds of public policy and/or morality was based on words within the design the meaning of which would not be known in the UK
derogation is unlikely to succeed where the registered community design was invalidated for lack of novelty
If an invalidation action against a registered community design fails at EU level, you can contact the IPO to let them know this. They will then update the list.
Changes to legislation related to UK design and international design and trade mark law
From 1 January 2021, all existing RCDs, UCDs, EUTMs and international design and trade mark registrations designating the EU no longer provide protection in the UK.
As a result, the UK has amended existing legislation to ensure that UK protection granted by these rights is preserved and the UK law continues to function effectively.
Numbering of re-registered design
The number allocated to the re-registered design consists of the full RCD number prefixed with the digit '9'.
This provides users with a means of identifying re-registered rights created from RCDs and distinguishing them from existing UK registered designs.
The following examples demonstrate how re-registered UK designs are codified:
|Existing RCD number||Re-registered UK design number|
IPO recognise that some RCD holders may not want to be granted a re-registered right.
Holders of the new right can 'opt out' of holding it. Opting out means that the re-registered design will be treated as if it had never been applied for or registered under UK law.
You may not exercise an opt out right in the following circumstances:
- if you have assigned, licensed or entered into an agreement in relation to the re-registered design if you have already launched proceedings based upon it.
How to request an opt out
To request an opt out, you must submit a short notice providing IPO with the RCD number, along with details of any persons with an interest in the right. The new law requires that notice to interested third parties must be given for opt out to have effect.
Therefore, where needed, you must confirm that such action has been taken. Opt out requests should only be submitted after 1 January 2021. Any requests made before this day will not be valid.
The IPO has created a notice template which you should use when requesting opt out.
The template is available on the IPO's trade mark forms and design form webpages, and they will provide a dedicated email address for sending it back to them. Once they receive a request, they will send you confirmation that the right has been removed from the UK register.
Opt out requests should only be submitted after 1 January 2021. Any requests made before this day will not be valid.
Renewals and restoration
Once re-registered UK design rights are created, a separate renewal fee will apply for each re-registered UK design. Both UK registered designs and RCDs can be renewed every 5 years up to a maximum of 25 years.
Once a re-registered design is created, a separate renewal fee will apply for both that UK right and the corresponding RCD. The fees will need to be paid separately to IPO and to EUIPO.
For the purposes of future renewal, the re-registered design will retain the existing renewal date of the corresponding RCD.
Under existing law, the IPO sends a renewal reminder to any UK registered design owner whose right is due to expire, and they do so in advance of the expiry date. This practice will be retained for all re-registered designs with renewal dates which fall more than six months after the end of the implementation period.
However, where the re-registered design expires within the six month period that falls after 1 January 2021, they will adopt a new procedure.
The IPO are also changing the law to accommodate RCDs that have expired in the six months before 1 January 2021, and which were still in their late renewal period when the UK left the EU.
Designs which expire after 1 January 2021
The same procedure for renewal and late renewal of registered designs under the Registered Designs Act and the Registered Designs Rules applies to re-registered designs.
You will be sent a reminder renewal notice on the actual day of expiry (or as soon as is practicable after that date). This notice will inform you that the re-registered design has expired, and that IPO will provide you with a further six month period, running from the date of the notice, in which the right may be renewed.
Where the re-registered design will expire within six months after 1 January 2021, the usual additional renewal fee will not be payable.
In addition to the new reminder notice being sent on or soon after the day of expiry, those with re-registered designs that expire within the fourth, fifth and sixth months after 1 January 2021 will also receive the conventional advance reminder notice in the usual manner.
Where the re-registered design is not renewed, it will be removed from the register. It may be restored at a later date in accordance with existing UK law.
You should note that where an RCD's renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO, on a date prior to 1 January 2021, will have no effect in respect of the re-registered design.
Any re-registered design with a renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee. This is regardless of whether a renewal action was taken on the corresponding RCD before 1 January 2021.
Designs which expire before 1 January 2021
IPO has created a re-registered design from any RCD which:
- expired in the six months prior to 1 January 2021
- has not been subject to a late renewal action at EUIPO by is still within its six month late renewal period on 1 January 2021
These re-registered designs will hold an 'expired' status. Their continued effect in the UK will be dependent upon late renewal of the corresponding RCD at EUIPO.
Where the corresponding RCD is subject to late renewal, that renewal will also have effect on the expired re-registered design. This means that the re-registered design will be automatically renewed as a result of the RCD's late renewal.
In this scenario, you will not be required to pay any renewal fees in respect of your first (UK) renewal of the re-registered design.
If the expired RCD is not late-renewed at EUIPO, then the re-registered design (which was created on 1 January 2021 in the UK) will be removed from the UK register on expiry of the corresponding RCD's late renewal period.
It will then be treated as if it had never been applied for or registered under UK law.
RCD registrations and applications reinstated after 1 January 2021
Under the Community Design Regulation, a right that has been struck from the EU register because of the applicant or owner's failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.
Re-registered designs have only been created from RCDs which were registered within six months of its renewal date prior to 1 January 2021.
Therefore, EU rights which are not registered on that date but which are subject to reinstatement will not automatically result in the grant of re-registered designs. To address this, the new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK.
Where RCDs are reinstated after 1 January 2021, and the proprietor notifies the IPO of such action, the IPO will create a re-registered design. Reinstatement of EU rights can only occur where application is made to the EUIPO within one year of the missed deadline.
If you hold an RCD which was reinstated after 1 January 2021, and you have not been granted a re-registered design, you should inform IPO within six months of the RCD's restoration by emailing firstname.lastname@example.org.
If you have a pending RCD application which was reinstated after 1 January 2021 and it holds a filing date prior to 1 January 2021, you may submit a UK registered design application claiming the earlier EU filing and/or priority date.
You can do this within nine months beginning with the date on which the corresponding RCD application was restored.
Where publication of the RCD is deferred at EUIPO
Under the new law, an RCD that is deferred on exit day will be treated as being equivalent to a pending application. The publication of an RCD may be deferred at EUIPO for up to thirty months.
Where deferment is requested, EUIPO will not publish the design until either the holder has paid a publication fee and the deferment period has elapsed, or the holder requests publication before such expiry.
Whilst the deferment period is ongoing, EUIPO will only publish basic details about the right holder and the filing date.
The holder of a deferred RCD can preserve its earlier filing and priority dates in the UK by filing an equivalent registered design application in the nine months after the end of the transition period, this being up to and including 30 September 2021.
The application will not be the subject of a substantive examination, because the RCD has already been examined by EUIPO.
Applying for the UK registered design to be deferred
There is currently no framework in UK legislation creating the right to defer publication of a registered design. As a matter of practice, the IPO permits applicants to defer publication of their design by up to 12 months.
The examples below explain when a design will be published where the RCD is subject to deferment at the EUIPO, and a corresponding UK application is made which seeks to retain the earlier RCD dates and requests UK deferment.
|Pre-1 January 2021 filing date of deferred RCD||Amount of maximum RCD deferment period remaining at 1 January 2021||Post-January 2021 filing date of UK application||How long publication will be deferred|
|1 October 2018||3 months (ie until 1 April 2021)||1 March 2021||1 month (ie until 1 April 2021, when corresponding RCD deferment period expires)|
|1 January 2020||18 months (ie until 1 July 2022)||30 September 2021||9 months (ie until 30 June 2022, when corresponding RCD deferment period expires)|
|1 November 2020||28 months (ie until 1 May 2023)||30 September 2021||12 months (ie until 30 September 2022, when UK deferment period expires)|
|31 December 2020||30 months (ie until 31 June 2023)||31 March 2021||12 months (ie until 31 March 2022, when UK deferment period expires)|
UK registered design applications, that do not seek to retain earlier filing and priority dates of a corresponding RCD that was deferred on 1 January 2021, may request UK deferment in the normal manner.
In such cases, a period of twelve months' deferment will run from the date on which the UK application was filed. This is regardless of whether that date falls inside or outside of the nine months after the end of the transition period.
Changes to legislation related to UK design and international design and trade mark law
Changes to UK design and trade mark law
From 1 January 2021, international design and trade mark registrations designating the EU no longer provide protection in the UK.
Information on the protection of these rights after 1 January 2021 is available:
- changes to international trade mark registrations after 1 January 2021
- international EU protected designs after 1 January 2021
- EU and international designs after 1 January 2021: legal issues for right holders
First published 25 November 2020