Changes to unregistered designs
Overview of the rules governing unregistered Community designs in the UK
Last updated 26 February 2021
Unregistered Community designs (UCDs) are no longer valid in the UK. These rights have been replaced by UK rights.
If you own an existing right, you do not need to do anything at this stage.
Continuing unregistered design
Designs protected in the UK as a UCD before January 2021 are protected as a UK continuing unregistered design.
It will continue to be protected in the UK for the remainder of the three-year term attached to it.
The fact that a corresponding UCD was established before 1 January 2021 through first disclosure in the EU but outside of the UK will not affect the validity of the continuing unregistered design.
Supplementary unregistered design
The UK has related a UK unregistered design right called supplementary unregistered design (SUD).
This right ensures the full range of design protection provided in the UK.
The terms of SUD protection are similar to those already conferred by UCD. However, the protection it provides does not extend to the EU.
A SUD mirrors a UCD by providing UK protection for both three and two-dimensional designs for a period of three years. The right is subject to interpretation by the UK Courts.
Disclosure
A SUD is established by first disclosure in the UK.
First disclosure in the EU will not establish a SUD. However, it may destroy the novelty in that design, should you later seek to claim UK unregistered rights.
Similarly, first disclosure in the UK may not establish a UCD and could destroy the novelty in that design, should you later seek to claim EU unregistered rights. However, you should check guidance from the EU Intellectual Property Office on this.
You should carefully consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU.
UK design right
A UK design right functions alongside the continuing and supplementary unregistered design.
It provides protection for the shape and configuration of three-dimensional articles for up to 15 years from the end of the year in which the design was first recorded or a corresponding article was first made.
The qualifying criteria for UK design right have changed.
Qualifications for the UK design right are limited to:
- people resident in the UK or a qualifying country (as defined in The Design Right (Reciprocal Protection) (No. 2) Order 1989).
- businesses formed under the laws of the UK or a qualifying country
Where a qualification is a result of first marketing, you will need to have disclosed your design in the UK or a qualifying country.
First published 25 November 2020