The end of the Brexit transition period on 31 December 2020 has dealt an unwelcome blow to many  businesses, particularly those within the fashion industry, which rely on unregistered design right (UDR) in order to protect their interests. UDR is of importance where design right registration is considered unfeasible by a business, for instance, due to the cost of having to register a plethora of designs on a regular basis and/or the short life span of the design(s) in question. 

Formerly, 2 or 3D designs which were novel and had individual character were afforded Unregistered Community Design (UCD) status automatically where the design was first disclosed (i.e. made available to the public) in the UK. What this meant was that its owner could prevent the unauthorised copying of the design throughout the EU for a three year period.

Unfortunately, however, the UK and the EU failed to reach agreement on the reciprocity of UDR as part of a post-Brexit trade deal. As a consequence, now that the transition period has ended, UCD status is no longer available where the first disclosure of a design takes place within the UK. Similarly, if the first disclosure of a design takes place within one of the 27 countries remaining in the EU, the design will not have UDR  protection in the UK.

These developments could open the way to the unauthorised copying of designs, unless such designs are registered in both the EU and the UK or can obtain UDR protection in both the EU and the UK by being made available to the public there simultaneously (a potential solution to the problem which has not yet been tested). Industry reports suggest this could lead to loss of turnover and, potentially, jobs

The UK's regime for UDR protection

1 January 2021 saw a more complex regime of UDR protection ushered into the UK.  Three types of UDR now exist in the UK but none of these provide protection within the EU.

  • UK UDR

This continues to exist by virtue of the Copyright Designs and Patents Act 1988. Like all UDR, it comes into existence automatically upon the creation of a relevant design. Broadly speaking, this will be the shape or configuration of the whole or part of an article (hence, a 3D design) which is original and not commonplace in its design field.

UK UDR prevents the unauthorised copying of  the design in the UK with protection lasting for a maximum of 15 years from the end of the year in which the design was first recorded or an article conform to the design was first made, whichever occurred first.  

Eligibility is by reference to a "qualifying person" who, in turn, must: (i) be a national of or resident in a qualifying country; (ii) have been incorporated or formed in the UK or another qualifying country; or (iii) have a place of business at which substantial business is carried out in any qualifying country. The EU member states are no longer qualifying countries.

  • Continuing unregistered design (CUD)

A UCD which was protected in the UK prior to 1 January 2021 will continue to be protected as a UK CUD for the remainder of the three year period attached to it, irrespective of whether its first disclosure was in the EU but outside the UK. CUD is not protected or enforceable in the EU.

  • Supplementary unregistered design (SUD)

This new category of UDR has been created to ensure that the full range of protection provided in the UK before 1 January 2021 remains available. It will therefore cover both 2 and 3D designs for period of three years.  The protection afforded by SUD mirrors that afforded by a UCD with the provisos that it does not extend to the EU and will be established by first disclosure in the UK or a qualifying country (which does not include any EU member state).

Key points to consider

Careful thought must now be given as to where a design should be first disclosed and whether to attempt disclosure simultaneously in the EU and the UK. Whilst it is not yet known how such simultaneous disclosure would be treated by the EU and the UK, this is perhaps best avoided lest it lead to UDR being lost in both territories. 

It should be borne in mind that first disclosure in the EU will establish UCD rights but not SUD rights and is likely to destroy novelty in the design, with the consequence that URD rights cannot later be established in the UK.   

Conversely, first disclosure of a relevant design in the UK will establish SUD rights only and not UCD rights in the 27 EU member states. It is also likely to prevent UCD rights being established when the design is afterwards disclosed in the EU.

Where possible/feasible, the best means of ensuring protection may be to register the design in the EU and the UK.