Following Brexit, we are seeing an increased number of UK Registered Designs which have been allowed to inadvertently lapse. So, what do you do in this situation? Read on to find out.
Following Brexit, EU Registered Designs and International Registered Designs protected in the EU under the Hague Agreement no longer have effect in the UK. The UKIPO has created corresponding UK Registered Designs for all such registrations protected before 1 January 2021. Accordingly, this has created new rights which must be renewed separately to the EU and International Registered Designs and there is the potential that this may be overlooked, for example, if the new rights have not been properly docketed.
If you find yourself in this situation, the first thing to do is to contact your UK attorney or renewal agent. In some cases, it will be possible to pay the renewal fee late. You can make a late renewal up to 6 months after the renewal date by paying a modest surcharge (currently £24 for each complete month beyond the renewal date) together with the required renewal fee. In this instance, there are no consequences resulting from the late payment.
If it is beyond 6 months, then all is still not lost (hopefully) – a request for restoration can be made up to 12 months from the renewal date. This should be accompanied by a statement (and any additional evidence) explaining why the Registered Design was not renewed in time, together with payment of the official fee (currently £120). It is therefore important to provide your attorney with full details of the circumstances surrounding the failure to pay the renewal fee.
If the UKIPO is satisfied that the failure to renew the design was unintentional, then the Registered Design will be restored upon payment of the outstanding renewal fee (due within 1 month of the notification from the UKIPO). It is possible that third parties may have acquired rights during this period, if they began in good faith an act which would have otherwise infringed (or made effective and serious preparations to do so). In this situation, the third party would be able to continue (or to do) the act without being considered to infringe.
It is worth noting that the "unintentional" bar applied by the UKIPO is lower than the requirement at the EUIPO where it is necessary to demonstrate that the proprietor was unable to observe the time limit despite all due care having been taken. We have successfully obtained restoration in cases where proprietors have not properly docketed their new UK rights following Brexit and so, pleasingly, it appears that the UKIPO is looking favourably on these circumstances.
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.
