Mon 11th Jun 2018
3D designs from outside the EU will need to be registered in the UK post-Brexit
Subject to any transitional arrangements or other changes in law following Brexit, scheduled for 29 March 2019 when the United Kingdom will leave the European Union, there will be no copyright or unregistered design right protection in the UK for the 3‑dimensional aspects of industrial designs for nationals of most non‑EU countries. This includes nationals of, amongst others, the US, Canada, Australia, China, Japan and South Korea.
Companies and individuals in these countries who wish to protect the 3‑dimensional aspects of their industrial designs in the UK will need to file for a registered design here. Fortunately, UK registered designs are relatively inexpensive and (with the help of Page White and Farrer) are easy to obtain.
In more detail, at present there are a number of EU‑wide provisions that relate to intellectual property. A relevant one here is the ‘Community’ or EU unregistered design right. In short (and whilst there are details to be considered in each case), this provides protection in EU countries against copying of designs of products, including the 3‑dimensional shape of the product and 2‑dimensional patterns or ornamentation applied to the product. This EU unregistered design right applies across all EU countries, normally for 3 years from first disclosure of the design in the EU, and is in addition to any national unregistered design right or other copyright protection provided by the individual countries of the EU. The EU unregistered design right is applied regardless of the nationality of the designer or the designer’s employer. That is, EU unregistered design right is a right that is given to nationals of non‑EU countries as well as nationals of EU countries.
When the UK leaves the EU, the EU unregistered design right will no longer cover the UK (subject possibly to any transitional provisions that may be applied for a period following Brexit). That will mean that designs can only be covered in the UK by national UK unregistered design right, copyright, and any registered rights. EU registered designs will not cover the UK.
Of most relevance here is that, in the UK and in simple terms, national UK copyright in the 3‑dimensional aspects of designs is restricted to ‘proper’ artistic works, in particular sculptures or other works of art with 3‑dimensional aspects. Regardless of their artistic merit, the 3‑dimensional aspects of industrial designs are not legally considered to be ‘proper’ artistic works and so are not protected by national UK copyright. (In contrast, UK copyright does apply to 2‑dimensional aspects, such as pattern or ornamentation, regardless of whether the product is an artistic work or an industrial article.)
Instead, UK national law provides for a national UK unregistered design right, which is specifically limited to protecting the 3‑dimensional shape of the industrial article. This provides protection against copying for the shorter of 15 years from the making of the design and 10 years from first marketing of products according to the design.
However, UK unregistered design right is only given to nationals of a limited number of countries. Currently these are the EU countries, Hong Kong, New Zealand and a few other former ‘protectorates’.
Notably, UK unregistered design right is not given to nationals of other countries, including the US, Canada, Australia, China, Japan or South Korea.
This means that, following Brexit, and subject to any transitional arrangements or other changes in law, there will be no copyright or unregistered design right protection for the 3‑dimensional aspects of industrial designs for nationals of, amongst others, US, Canada, Australia, China, Japan or South Korea.
Accordingly, in order to protect the 3‑dimensional aspects of an industrial design in the United Kingdom, companies and individuals from these countries should consider filing for a national UK registered design. UK registered designs have an initial term of 5 years, renewable up to a maximum term of 25 years in blocks of 5 years. Registered designs provide an absolute right, in that it is not necessary to show that copying took place: independent design by a third party can still infringe a registered design.
UK registered designs are relatively inexpensive and are easy to obtain, and we regularly file and obtain UK registered designs for our clients.
For advice on protecting your designs in the UK, Europe and internationally, or on intellectual property protection in general, please contact Adam Flint on 44 (0) 20 7831 7929 or email firstname.lastname@example.org.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in June 2018.