By Amanda Mack
Since the end of the Brexit transition period (1 January 2021) certain types of design rights are no longer valid in the UK.
The rights affected are:
- Registered Community designs (RCDs)
- International design registrations protected in the EU under the Hague Agreement (ID(EU)s)
- Unregistered Community designs (UCDs),
These rights are automatically replaced by equivalent UK rights, at no cost to the holder. If you own an existing right, you do not need to do anything at this stage, apart from consider the address for service requirement as described in our summary.
The key changes for both new rights and existing rights can be summarised as follows:
Past practice – prior to January 2021
UK design protection could be obtained via a registered right or an unregistered right in the following ways:
- a national registered design filed at the UKIPO
- a registered Community design filed at 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 UCD.
Current practice – from 1 January 2021
UK design protection can be obtained via a registered right or an unregistered right in the following ways:
- a national registered design filed at the UKIPO. A UK address for service is required.
- an international registration designating the UK, filed under the Hague Agreement at WIPO
- unregistered protection can be obtained in the UK through the UK design right and unregistered Supplementary Design Right (SUD).
Any existing RCDs, UCDs, and ID(EU) designs now only cover the remaining EU member states.
IDs designating the UK are unaffected.
A new unregistered Supplementary Design Right (SUD) is created with similar effect to the UCD, please contact us for more information on this if required, as the right will be subject to interpretation by the UK Courts and sits alongside the existing UK unregistered design right provisions.
All registered and published RCDs, and registered ID(EU)s, now have comparable UK designs, recorded on the UK register (re-registered). These will be treated as if they had been applied for and registered under UK law. They will retain the registration and application dates recorded against the corresponding RCDs and ID(EU)s and will inherit any priority dates.
As fully independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD/ID(EU).
On 1 January 2021, there were a small number of RCD or ID(EU) applications still pending in the EU system or WIPO. If you held a pending RCD or ID(EU) 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 or ID(EU). To do so, the UK application must relate to the same design as that filed in the pending RCD or ID(EU).
They will be examined under UK law and the standard UK fee structure will apply (see below). A UK address for service is required.
Registration Date & Priority Dates
The UKIPO will recognise the registration date and any priority date attached to an ID(EU) registration for the purposes of the UK application. This will be relevant for the purposes of determining the re-registered ID design’s novelty.
On 1 January 2021, if you have sought protection in the EU through an application for an ID(EU) registration, you may also claim the earlier registration date (and any priority date) for a corresponding UK registered design application. This will be applicable where that application has been published by WIPO, but the period in which the EUIPO must notify WIPO of refusal has not yet expired.
ID(EU) designs that have been subject to a notice of refusal issued by the EUIPO prior to 1 January 2021 cannot be used for the purposes of claiming an earlier date when filing a corresponding UK application.
Please let us know should you require further information on any of the above.
More detailed practice information and costs
UK Filings for New Designs*
- £300 for a single design
- £150 per additional design
(plus VAT where applicable, and disbursements)
- £50 for a single design
- £70 for multiple design (up to 10)
- £20 each additional group of up to 10
Includes preparing and filing an application for each design, including classification of design and reporting. A UK address for service is required.
Additional designs can be combined in a group of related applications at this discounted rate but must be within the same Locarno classification, plus ornamentation.
Substantive objections are unusual, but objections can be raised if, e.g. the design views are inconsistent or the classification is not clear. If no substantive objections are raised by the UKIPO the applications would proceed to registration with around an additional £120.00 plus VAT payable before registration in each case, and many applications proceed without issue. However, if any objections are raised at Examination stage, additional charges would be incurred.
The UKIPO’s rules on address for service have changed. From 1 January 2021 you will need an address in the UK, Gibraltar or the Channel Islands to file a UK design application. This means the UKIPO will no longer accept addresses in the EEA.
*including the conversion of RCD applications, ID(EU) applications and unpublished RCDs or ID(EU)s pending on 1 January 2021 (to be filed up to and including 30 September 2021).
Appointing us as Address for Service for Equivalent UK Design re-registrations and Existing Registrations
The UKIPO’s rules on address for service have changed. From 1 January 2021 you will need an address in the UK, Gibraltar or the Channel Islands to file a design application, and for contentious proceedings. Although there are some exceptions to the requirement for a UK address for service for design re-registrations and existing design registrations, there are benefits to having a UK address for service for all your UK intellectual property matters at the UKIPO. Your UK representative will receive all official correspondence on your behalf. In the absence of a local address for service the UKIPO will, in some circumstances, correspond directly with the IP owner.
Our recommended approach is for us to simply take over the equivalent UK re-registrations / registrations and to record ourselves as the local representative and address for service for renewal reminders and other correspondence.
Please contact us for favourable rates, depending on the number of cases.
UK Designs – Cancellations & Challenges
Due to the unique circumstances of each case, please contact us with an outline of the background, so that we can advise further on possible contentious issues. A UK based address for service is required in most contentious scenarios.
Renewing Existing RCDs and ID(EU)s as Comparable UK re-registered Designs
A separate renewal fee applies for each re-registered UK design. UK registered designs, ID(EU)s and RCDs can each be renewed every 5 years up to a maximum of 25 years.
A separate renewal fee applies for both that UK right and the corresponding RCD/ID(EU). The fees will need to be paid separately to the UKIPO and to EUIPO/WIPO.
For the purposes of future renewal, the re-registered design will retain the existing renewal date of the corresponding RCD/ID(EU).
If paid by the original deadline the renewal fees in the UK are:
£120 per design (plus VAT where applicable, and disbursements)
- First renewal = £70
- Second renewal = £90
- Third renewal = £110
- Fourth renewal = £140
If you don’t renew up to 6 months before or within 1 month after the renewal date, you’ll also need to pay latepayment fees. You can make a ‘late renewal‘ up to 6 months after the renewal date by paying £24 for each complete month that’s passed on top of the renewal fee. For the first 6 months following 1 January, 2021 these fees are waived. Our additional fee for late renewal is £75 per design.
Designs which expire after 1 January 2021
The same procedure for renewal and late renewal of registered designs applies to re-registered designs and UK filed registered designs.
Where the re-registered design expires within six months after 1 January 2021, the usual additional renewal fee will not be payable.
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/ID(EU)’s renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO/WIPO, on a date prior to 1 January 2021, has 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 is subject to a UK renewal action and fee. This is regardless of whether a renewal action was taken on the corresponding RCD/ID(EU) before 1 January 2021.
Designs which expire before 1 January 2021
A re-registered UK design is also created from any RCD or ID(EU) which:
- expired in the six months prior to 1 January 2021
- has not been subject to a late renewal action at EUIPO/WIPO but 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/ID(EU) at EUIPO/WIPO.
Where the corresponding RCD/ID(EU) 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/ID(EU)’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/ID(EU) is not late-renewed at EUIPO/WIPO, 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/ID(EU)’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, there are certain circumstances in which a right that has been struck from the EU register due to failure to meet a deadline may be reinstated later.
The UKIPO has adopted means to preserve those rights in the UK in certain circumstances, please contact us if this occurs.
Deferred publication – Where publication of the RCD is deferred at EUIPO
Under the new law, an RCD/ID(EU) that is deferred on exit day will be treated as being equivalent to a pending application. The publication of an RCD/ID(EU) may be deferred at EUIPO for up to thirty months.
The holder of a deferred RCD/ID(EU) 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.
Deferred publication – Applying for the UK re-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 UKIPO permits applicants to defer publication of their design by up to 12 months. In some instances, it may be necessary to publish the UK re-registration before the end of the thirty months entitlement of the original RCD/ID(EU), please contact us for more information in this circumstance. Additional fees apply.
UK Designs – Opting Out
Owners of RCD’s/ID(EU)’s may opt-out of holding a re-registered design in the UK, please contact us if this is applicable. Opt out requests should only be submitted after 1 January 2021. Any requests made before this day will not be valid.