This guidance explains the changes to UK law as a result of the Withdrawal Agreement, that preserve existing design and international rights. It also covers other legislative changes required to effectively administer and implement the new rights.

Designs are a form of intellectual property. They protect the appearance of the whole or part of a product resulting from the features of, in particular, its lines, contours, colour, shape, texture, materials and ornamentation.

A design can be protected if it is new and has individual character compared to designs that are already in the public domain.

Trade marks enable consumers and businesses to differentiate the goods and services of one trader from another. They commonly take the form of words, logos, or a combination of both.

Trade marks are registered rights, with protection in the UK granted by the Intellectual Property Office (IPO), the European Union Intellectual Property Office (EUIPO), or via an international registration filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO).

What will change after the end of the transition period

At the end of the transition period (1 January 2021), registered Community designs (RCDs), unregistered Community designs (UCDs), will no longer be valid in the UK.

These rights will be immediately and automatically replaced by UK rights. If you own an existing right, you do not need to do anything at this stage.

Design protection can currently be obtained via a registered right or an unregistered right in the following ways:

• a national registered design granted by the IPO of the UK
• a registered Community design granted by the EUIPO
• an international registration designating either the UK or the EU, filed under the Hague Agreement at WIPO
• unregistered protection can be obtained in the UK through the UK design right and the EU unregistered Community design.

On 1 January 2021, any existing RCDs, UCDs, European Union Trade Marks (EUTM), and International (EU) designs and trade marks will only cover the remaining EU member states.

Registered design

Creation of the re-registered design

All registered and published RCDs will have comparable UK designs, which will be recorded on the UK register. These will be treated as if they had been applied for and registered under UK law.

The legislative changes introduced in the UK will ensure that the holder of an RCD is provided with an equivalent UK right. They will retain the registration and application dates recorded against the corresponding RCDs and will inherit any priority dates.

As fully independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD.

Re-registered designs will be created at no cost to the RCD holder, and we are ensuring that minimal administrative burden will be placed upon the right holder.

Pending applications

On 1 January 2021, there will be a small number of RCD applications that are still pending in the EU system.

If you hold a pending RCD application on 1 January 2021, you will be able to apply to register a UK design in the nine months after the end of the transition period, this being up to and including 30 September 2021 and retain the earlier filing date of the pending RCD

To do so, the UK application must relate to the same design as that filed in the pending RCD application.

If the details of the UK application do not match those of the corresponding RCD application, then the earlier EU date(s) will not be recognised.

Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.

These applications will be treated as a UK registered design application. They will be examined under UK law. In these circumstances, the standard UK fee structure will apply.

Effect of priority claims

A priority date claimed under the Paris Convention that has been recorded against the corresponding RCD will be inherited by the re-registered design. The date of that priority claim will have effect where proceedings involve a re-registered design with a priority claim inherited from the corresponding RCD.

Pending invalidation actions at the EUIPO

Registered designs can be challenged by third parties under the grounds of invalidation. If this action succeeds, then the right is removed fully or partially from the register.

At the end of the transition period, we will create UK re-registered designs for all registered community designs (RCD’S) registered at 31 December 2020. This includes registered community designs that are subject to invalidation proceedings.

The Withdrawal Agreement requires that where a registered community design (RCD) is subject to ongoing invalidation proceedings at the end of the transition period, and is subsequently invalidated, the outcome shall be applied to the corresponding UK re-registered right.

This means that if you own a RCD that is subject to invalidation proceedings at the end of the transition period and that right is subsequently invalidated, whether wholly or partially, your UK re-registered right will also be invalidated to the same extent.

If you are a party that has succeeded in invalidating a RCD and this action was ongoing at the end of the transition period, the invalidation will be applied to the UK re-registered right, without the need for you to bring a new invalidation action before the UK IPO.

There is an exception where the grounds for invalidating the RCD would not apply in the UK. In this case the UK right will not be invalidated. This is referred to as a derogation.

All re-registered community designs which are subject to ongoing invalidity proceedings at the end of the transition period we will be recorded on a dedicated list on the IPO website. This list will be available once the transition period ends. When a final decision in the proceedings against the RCD is reached, meaning that no further appeals are possible, an invalidation notice may be sent to us by any person. We will also initiate the invalidation of a re-registered right or direct another party do to so if we become aware that the corresponding RCD has been invalidated.

If you are the owner of the re-registered design sending us an invalidation notice, and you wish to claim the derogation, you must send the derogation notice with the invalidation notice.

If a third party sends us an invalidation notice, we will send this to the owner of the re-registered design. If they believe that the invalidation should not apply in the UK, they must file a derogation notice within a period of one month following receipt of the invalidation notice. If we become aware that an EU right is cancelled, then we will write to the owner of the re-registered design and give them the same notice to file a derogation.

The IPO Tribunal will then decide whether or not the re-registered design should be invalidated in the UK. Some examples of how a derogation is likely to succeed or not succeed are set out below:

• derogation is likely to succeed where the invalidation of a design on the grounds of public policy and/or morality was based on words within the design the meaning of which would not be known in the UK
• derogation is unlikely to succeed where the registered community design was invalidated for lack of novelty

If an invalidation action against a registered community design fails at EU level, you can contact the IPO to let us know this. We will then update the list.

Changes to legislation related to UK design and international design and trade mark law

How UK design and international design and trade mark law currently works

The Withdrawal Agreement covers the above-mentioned aspects for RCDs, there are other changes that must be made to UK legislation on designs for the effective administration and implementation of the comparable rights. These are set out below.

The primary UK legislation on registered designs is The Registered Designs Act 1949. There is also secondary legislation, mainly contained within the Registered Design Rules 2006, together with amending and standalone regulations.

RCDs and UCDs are defined by Council Regulation (EC) No 6/2002 on Community designs. Registered and unregistered Community designs both have effect in the UK.

The Community design regulation has been amended to apply the Hague System for the international registration of industrial designs to the EU. Separately, the Registered Designs Act has been amended to apply the Hague System to the UK as an individual country.

UK legislation on trade marks is primarily contained in the Trade Marks Act 1994. Secondary legislation appears in the Trade Marks Rules 2008 and other amending and standalone regulations.

Protected international trade marks registrations filed under the Madrid Protocol that designate the UK or the EU (or both) also currently have effect in the UK.

We are changing UK design and trade mark law

On 1 January 2021, all existing RCDs, UCDs, EUTMs and international design and trade mark registrations designating the EU will no longer provide protection in the UK.

As a result, we must amend existing legislation to ensure that UK protection granted by these rights is preserved and allows UK law to continue to function effectively.

In addition, it will be necessary to remove or amend many of the existing references to the EU, European Economic Areas (EEA), and Member States that will become redundant or inappropriate.

Numbering of re-registered design

The number allocated to the re-registered design will consist of the full RCD number prefixed with the digit ‘9’.

This will provide users with a means of identifying re-registered rights created from RCDs and distinguishing them from existing UK registered designs.

The following examples demonstrate how re-registered UK designs will be codified:

Opt out

We are creating approximately 700,000 designs re-registered on 1 January 2021, we recognise that some RCD holders may not want to be granted such a right.

Holders of the new right will be allowed to ‘opt out’ of holding it. Opting out will mean that the re-registered design will be treated as if it had never been applied for or registered under UK law.

You may not exercise an opt out right in the following circumstances:

• if you have assigned, licensed or entered into an agreement in relation to the re-registered design if you have already launched proceedings based upon it.

How to request an opt out

To request an opt out, you must submit a short notice providing us with the RCD number, along with details of any persons with an interest in the right. The new law requires that notice to interested third parties must be given for opt out to have effect.

Therefore, where needed, you must confirm that such action has been taken. Opt out requests should only be submitted after 1 January 2021. Any requests made before this day will not be valid.

We have created a notice template which you should use when requesting opt out.

The template will be available at GOV.UK on 1 January 2021, and we will provide a dedicated email address for sending it back to us. Once we have received a request, we will send you confirmation that the right has been removed from the UK register.

Opt out requests should only be submitted after 1 January 2021. Any requests made before this day will not be valid.

Renewals and restoration

Once re-registered UK design rights are created, a separate renewal fee will apply for each re-registered UK design. Both UK registered designs and RCDs can be renewed every 5 years up to a maximum of 25 years.

Once a re-registered design is created, a separate renewal fee will apply for both that UK right and the corresponding RCD. The fees will need to be paid separately to IPO and to EUIPO.

For the purposes of future renewal, the re-registered design will retain the existing renewal date of the corresponding RCD.

Under existing law, we send a renewal reminder to any UK registered design owner whose right is due to expire, and we do so in advance of the expiry date. This practice will be retained for all re-registered designs with renewal dates which fall more than six months after the end of the implementation period.

However, where the re-registered design expires within the six month period that falls after 1 January 2021, we will adopt a new procedure.

We are also changing the law to accommodate RCDs that have expired in the six months before 1 January 2021, and which are still in their late renewal period when we leave the EU.

Designs which expire after 1 January 2021

The same procedure for renewal and late renewal of registered designs under the Registered Designs Act and the Registered Designs Rules will apply to re-registered designs.

You will be sent a reminder renewal notice on the actual day of expiry (or as soon as is practicable after that date). This notice will inform you that the re-registered design has expired, and that we will provide you with a further six month period, running from the date of the notice, in which the right may be renewed.

Where the re-registered design will expire within six months after 1 January 2021, the usual additional renewal fee will not be payable.

In addition to the new reminder notice being sent on or soon after the day of expiry, those with re-registered designs that expire within the fourth, fifth and sixth months after 1 January 2021 will also receive the conventional advance reminder notice in the usual manner.

Where the re-registered design is not renewed, it will be removed from the register. It may be restored at a later date in accordance with existing UK law.

You should note that where an RCD’s renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO, on a date prior to 1 January 2021, will have no effect in respect of the re-registered design.

Any re-registered design with a renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee. This is regardless of whether a renewal action was taken on the corresponding RCD before 1 January 2021.

Designs which expire before 1 January 2021

We will also create a re-registered design from any RCD which:

• expired in the six months prior to 1 January 2021
• has not been subject to a late renewal action at EUIPO by is still within its six month late renewal period on 1 January 2021

These re-registered designs will hold an ‘expired’ status. Their continued effect in the UK will be dependent upon late renewal of the corresponding RCD at EUIPO.

Where the corresponding RCD is subject to late renewal, that renewal will also have effect on the expired re-registered design. This means that the re-registered design will be automatically renewed as a result of the RCD’s late renewal.

In this scenario, you will not be required to pay any renewal fees in respect of your first (UK) renewal of the re-registered design.

If the expired RCD is not late-renewed at EUIPO, then the re-registered design (which was created on 1 January 2021 in the UK) will be removed from the UK register on expiry of the corresponding RCD’s late renewal period.

It will then be treated as if it had never been applied for or registered under UK law.

RCD registrations and applications reinstated after 1 January 2021

Under the Community Design Regulation, a right that has been struck from the EU register because of the applicant or owner’s failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.

Re-registered designs will only be created from RCDs which are registered within six months of its renewal date prior to 1 January 2021.

Therefore, EU rights which are not registered on that date but which are subject to reinstatement will not automatically result in the grant of re-registered designs. To address this, the new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK.

Where RCDs are reinstated after 1 January 2021, and the proprietor notifies us of such action, we will create a re-registered design. Reinstatement of EU rights can only occur where application is made to the EUIPO within one year of the missed deadline.

If you hold an RCD which was reinstated after 1 January 2021, and you have not been granted a re-registered design, you should inform us within six months of the RCD’s restoration by emailing information@ipo.gov.uk.

If you have a pending RCD application which was reinstated after 1 January 2021 and it holds a filing date prior to 1 January 2021, you may submit a UK registered design application claiming the earlier EU filing and/or priority date.

You can do this within nine months beginning with the date on which the corresponding RCD application was restored.

Deferred publication

Where publication of the RCD is deferred at EUIPO

Under the new law, an RCD that is deferred on exit day will be treated as being equivalent to a pending application. The publication of an RCD may be deferred at EUIPO for up to thirty months.

Where deferment is requested, EUIPO will not publish the design until either the holder has paid a publication fee and the deferment period has elapsed, or the holder requests publication before such expiry.

Whilst the deferment period is ongoing, EUIPO will only publish basic details about the right holder and the filing date.

The holder of a deferred RCD can preserve its earlier filing and priority dates in the UK by filing an equivalent registered design application in the nine months after the end of the transition period, this being up to and including 30 September 2021.

The application will not be the subject of a substantive examination, because the RCD has already been examined by EUIPO.

Applying for the UK registered design to be deferred

There is currently no framework in UK legislation creating the right to defer publication of a registered design. As a matter of practice, the IPO permits applicants to defer publication of their design by up to 12 months.

The examples below explain when a design will be published where the RCD is subject to deferment at the EUIPO, and a corresponding UK application is made which seeks to retain the earlier RCD dates and requests UK deferment.

UK registered design applications, that do not seek to retain earlier filing and priority dates of a corresponding RCD that was deferred on 1 January 2021, may request UK deferment in the normal manner.

In such cases, a period of twelve months’ deferment will run from the date on which the UK application was filed. This is regardless of whether that date falls inside or outside of the nine months after the end of the transition period.

Changes to legislation related to UK design and international design and trade mark law

How UK design and international design and trade mark law currently works

The primary UK legislation on registered designs is The Registered Designs Act 1949. There is also secondary legislation, mainly contained within the Registered Design Rules 2006, together with amending and standalone regulations.

RCDs and UCDs are defined by Council Regulation (EC) No 6/2002 on Community designs. Registered and unregistered Community designs both have effect in the UK.

The Community design regulation has been amended to apply the Hague System for the international registration of industrial designs to the EU. Separately, the Registered Designs Act has been amended to apply the Hague System to the UK as an individual country.

UK legislation on trade marks is primarily contained in the Trade Marks Act 1994. Secondary legislation appears in the Trade Marks Rules 2008 and other amending and standalone regulations.

Protected international trade marks registrations filed under the Madrid Protocol that designate the UK or the EU (or both) also currently have effect in the UK.

We are changing UK design and trade mark law

After 1 January 2021, international design and trade mark registrations designating the EU will no longer provide protection in the UK.

Information on the protection of these rights after 1 January 2021 is available:

• changes to international trade mark registrations after 1 January 2021
• international EU protected designs after 1 January 2021
• EU and international designs after 1 January 2021: legal issues for right holders