Changes to unregistered designs
Guidance for businesses who have unregistered Community designs.
Unregistered Community designs (UCDs), are no longer valid in the UK. These rights have been replaced by UK rights.
If you have an existing right, you do not need to do anything as you have been given an equivalent UK right.
Continuing unregistered design
Designs protected in the UK as a UCD before January 2021 are now protected as a UK continuing unregistered design (CUD).
They 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 does not affect the validity of the continuing unregistered design.
Supplementary unregistered design
The UK has created a UK unregistered design right called the supplementary unregistered design (SUD).
This right ensures the full range of design protection is available in the UK.
The SUD mirrors the UCD and protects the 2D and 3D appearance of whole or part of a product for a period of three years.
The protection it provides does not extend to the EU. The right is be subject to interpretation by the UK Courts.
Disclosure
A SUD is established by first disclosure in the UK.
First disclosure in the EU does 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.
If you first disclose your design in the EU, you may still be able to register your design in the UK. You will need to register your design in the UK within 12 months from the first disclosure.
UK unregistered design right
A UK unregistered design right functions alongside continuing and supplementary unregistered designs.
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 has 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 qualification is a result of first marketing, you will need to have disclosed your design in the UK or a qualifying country.