EU and international designs after 1 January 2021: legal issues for right holders
What to do if you have pending court proceedings and other legal issues.
No proof of registration for holders of new re-registered designs
Holders of new re-registered designs will not receive a UK registration certificate.
Details of the new UK right will be accessible via our Find a registered design, service on GOV.UK.
Jurisdictional arrangements and pending proceedings
UK courts can currently act as EU courts in infringement actions relating to registered Community designs and international (EU) design rights.
Cases are heard under the Community design regulation and the court can issue pan-EU injunctions.
We anticipate that on 1 January 2021 there will be a small number of cases ongoing before these courts.
We will no longer be under the jurisdiction of the EU legal system after 1 January 2021. As a result, any EU wide injunctions will not apply to the re-registered UK rights.
Proceedings before the IPO’s tribunal which are ongoing at the end of the transition period will continue to be heard under the Registered Designs Act. These will include proceedings in which the holder of an RCD or international (EU) design has brought an action against a UK national right.
These proceedings will continue towards resolution on the basis of the law as it stood prior to 1 January 2021. If you are a defendant in IPO proceedings based on an RCD or international (EU) design right, or you are the holder of an RCD or international (EU) right and are involved in proceedings to oppose or cancel a UK registered design, these will continue.
Existing injunctions
Court injunctions can prohibit actions which would otherwise give rise to the infringement of an RCD or an international (EU) design.
Where an injunction in place at 1 January 2021 prohibits actions in the UK which would infringe an existing RCD or international (EU) design right, the terms of that injunction will be treated as if they also apply to the re-registered design.
Licences, security interests and assignments
On 1 January 2021, you may hold a registered Community design (RCD) or protected international (EU) design which is subject to a licence or security interest, and that licence or security interest may authorise actions in the UK which would otherwise infringe the RCD or international (EU) design right.
Subject to any specific conditions it may require, the new law confirms that such a licence or security interest will continue to have legal effect in the UK.
Any licence or security interest that refers to an RCD or international (EU) design right and authorises acts in the UK will therefore be treated as if it applies to the re-registered design.
It is important that you notify any licensees of the new right. You should check that the creation of the new right does not breach any agreement.
UK law does not require that transactions are registered per se. However, licences and security interests which are registered at IPO within a period of six-months after the date of their being entered into provide certain protections which do not apply to unregistered transactions.
These protections assist people with an interest in the design and those seeking full relief for infringement, and they are largely dependent upon proof that an application to register a transaction has been made.
We recognise that applications to register licences and security interests relating to re-registered designs cannot be submitted before those rights are created.
Where a licence or security interest is already registered in the EU and/or international register before 1 January 2021, we will extend the period within which such transactions must be recorded on the UK register. The extended period will run to 12-months from 1 January 2021.
Where an RCD or international (EU) design right has been the subject of an assignment prior to 1 January 2021 which has not been recorded in the International Register, the assignor or the assignee will have the right after 1 January 2021 to apply to record the re-registered design in the name of the assignee.
Notifications about changes for rights holders and how to opt out
We will publish a website notice in all languages of the EU. This will confirm that any holder of a registered Community design or international (EU) design registered or protected prior to 1 January 2021 will, on and after 1 January 2021, also become the holder of a re-registered UK design.
This notice will provide a short summary of information relating to the UK right, including information on how to opt out.