UK: Pan-European Design Protection: Considerations For Automotive Manufacturers Post-Brexit

Automotive manufacturers used to enjoy protection in both the UK and the EU27 under Registered and Unregistered Community Designs (RCDs and UCDs). Now the Brexit transition period is over, such RCDs and UCDs no longer extend to the UK. Below, we take a look at some of the changes to design protection the automotive industry will encounter now the UK is outside of the EU's designs regime.

Unregistered Designs

UCDs provide automatic, short-term, and EU-wide protection against copying for new designs upon the first publication of the design. This protection is accrued regardless of whether the designer has applied separately for protection under a registered design. However, now that the UK has formally left the EU's designs regime, UCD protection no longer covers the UK.

Like the EU, the UK also provides automatic short-term protection for any new designs upon first publication. In the UK, these UCD-equivalent rights are known as Supplementary Unregistered Designs (SUD). Such SUDs were created to replace the loss of CUD in the UK.

Importantly, both the EU and the UK require that for such unregistered protection to subsist, the first global publication of the design must occur in the territory of the EU or UK respectively. It follows that whilst exhibitors at EU exhibitions such as the International Motor Show in Frankfurt will obtain UCD protection covering the EU, the disclosure of their designs in the territory of the EU will preclude them from obtaining the equivalent SUD protection in the UK. Likewise, exhibitors who launch their new designs in the UK, for example at the London Motor Show, will automatically obtain SUD protection covering the UK, but will be unable to obtain UCD protection in the EU. Consequently, businesses must take care to choose where to initially publish their new products to ensure that appropriate unregistered design protection subsists.

Currently, it is not clear whether attempts to publish a design simultaneously in both the UK and the EU, for example through a website or social media, would allow protection to be obtained in both jurisdictions. Unfortunately, there is no relevant precedent in EU or UK law on this point at present and, until we have clarity from the courts, there is a risk that simultaneously publishing in both the UK and the EU could inadvertently kill both rights, since neither could claim to genuinely be the first global publication of the design.

Registered Designs

RCDs also provide protection for designs in the EU. In contrast to UCDs, RCDs can only be obtained by application to the EU Intellectual Property Office and therefore do not arise automatically. The UK also has its own from of registered design protection, namely UK Registered Designs (UKRDs). UKRDs are very similar in substance to RCDs but cover the UK only. As with RCDs, UKRDs can only be obtained by application, but in this case to the UK Intellectual Property Office.

In general, registered designs (both RCDs and UKRDs) provide two major advantages over their unregistered equivalents (UCDs and SUDs). First, registered designs can be renewed up to a maximum term of twenty-five years, as compared to the maximum term of three years for unregistered designs. Secondly, whilst unregistered designs require proof that copying took place to be enforced, registered designs protect against third party products which merely create the same “overall impression” as the representations filed with the design, regardless of whether copying took place or not. As such, registered designs provide a true monopoly right with a lower bar to enforcement than unregistered designs.

Before Brexit, all RCDs were enforceable in the UK. At the start of this year, the UK cloned all live RCDs onto the UK designs register to ensure that protection in the UK for RCD holders was not lost. However, the cloned UKRDs are separate and distinct from the RCDs on which they are based. This means that they must be renewed and enforced separately. Going forwards, if registered design protection is required in the UK as well as the EU, it will be necessary to apply for RCD and UKRD protection separately.

Mitigating Future Risks

So where does all of this leave European car designers? The UK has a vibrant and thriving car culture, and so, regardless of Brexit, remains an important market for vehicles and automotive accessories originating from the EU. There is therefore a need to ensure that appropriate protection arises in both jurisdictions.

To mitigate the risk of being unprotected at home or abroad, a prudent investment for automotive businesses may be to apply for both UK and EU registered designs to cover new products. Unlike their unregistered equivalents, UK and EU registered designs have no requirements regarding the territory of first publication, and so it is possible to simultaneously hold protection in both the UK and the EU. Therefore, new products launched at the International Motor Show in Frankfurt can still be protected in the UK under a UKRD, and those launched at the London Motor Show can still be protected in the EU under an RCD.

Although obtaining registered design protection is not free, the costs are inexpensive compared to most other intellectual property rights. Furthermore, given the lower bar to enforcement of registered designs, the broader protection they provide should be highly attractive to automotive businesses looking for robust pan-European protection.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.