UK designers' rights "will be swept away" by Brexit, warns intellectual property lawyer

Brexit crisis: UK creatives could be left at a significant disadvantage after Brexit unless the government acts, according to lawyer Margaret Briffa, who has issued a guidance note to help designers understand the legal ramifications.

Many of the laws that currently protect designs in Britain are based on European Court rulings, and may become invalid unless the UK government agrees to re-adopt them all, she claims.

"Rights that UK designers enjoy by being part of the EU will be swept away," warns Briffa in the note.

Lawyer Margaret Briffa releases Brexit guide note to designers
Lawyer Margaret Briffa has issued a guidance warning UK designers about the legal ramifications of Brexit

"Without government intervention to redress the balance of what will be the most sloped playing field ever, UK designers are set to be seriously disadvantaged in comparison to their European counterparts."

Briffa is founding partner of the eponymous law firm, which specialises in intellectual property and technology law.

Her note explains how each of the four main intellectual property rights used by designers could be impacted by the UK's possible exit from the European Union, and offers advice to protect against any change in the legislation.

Last month her firm warned that designers would have to file copyright applications in both the UK and EU, incurring extra cost and administrative work, if European Union design and trademark rights creased to be effective in the UK.

Trunkee design battle with Kidee
The Supreme Court decision about the Trunki case exposed the differences in protection of designers' rights between continental Europe and the UK

UK companies could also be ruled out of a new unitary patent, whereby a single patent application will cover most European countries.

Read the legal advice note on intellectual property rights for designers by Margaret Briffa:

Designs On Brexit – an overview of the legal landscape

British designers still reeling from the Supreme Court decision on Trunki should look away now. If the Trunki case exposed the differences in protection of designers' rights between continental Europe and the UK, the effect of Brexit on design law could be far worse.

Rights that UK designers enjoy by being part of the EU will be swept away. Without government intervention to redress the balance of what will be the most sloped playing field ever, UK designers are set to be seriously disadvantaged in comparison to their European counterparts.

The law that applies to protect designers from having their work copied is complex and multilayered. Up to four different design rights can apply to any single product. These are Registered UK Design Right, Registered Community Design Right, Unregistered UK Design Right and Unregistered Community Design Right.

These rights together make up the designer's tool box to be deployed when needed to prevent copying of work. By using these rights a designer can reap the benefit of the investment made in creating products.

On Brexit, in the absence of any intervention by the government, the position will be as follows.

Registered Community Design Right

These are European rights which protect the shape or other aspects of a design as depicted in the registration. Registrations can be maintained for up to 25 years giving a far longer term of protection than available for any unregistered rights.

On Brexit the UK part of this right would be lost meaning that a designer would have no registered right in the UK.

It has been suggested by some that the EU may agree to designers continuing to benefit from Registered Community Design Right in the UK. While this would be a good thing for designers from other countries who rely on Community Registered Design Right, at this point in time this can only be seen as wishful thinking.

Community design rights depend on acceptance of the European Court of Justice as the ultimate authority on the interpretation of laws, including design law. Agreement to this would therefore involve agreeing on something that many Brexiteers specifically object to, namely the principle that the European Court of Justice is superior to our own domestic courts.

Assuming the "let's just hope everything stays the same" option is not possible, where are we left?

To qualify as a registered design a design must be "new" – meaning that, subject to a short period of time to allow a designer to test the market, a design which is "on the market" cannot be considered new. This means that it will not be possible for a designer to simply register a design in the UK that used to be protected as a Registered Community Design.

The government would need to make specific provision to allow designers to record a design that is part of a Community registered design as a UK design backdating the filing date to when it was filed in the European Community.

To make such a process workable, bearing in mind the many millions of community registered designs in force, designers may be required to pay a fee to have their community design noted on the UK Designs Register as a registered design.

In practice only designs in use, and where protection in the UK was important to the designer, would be actioned. Nonetheless the task ahead would be labour intensive and potentially costly for a designer.

Even if a right to have a Registered Community Design recorded as a UK registered design is put in place, a UK designer will still not be in as good a position as pre-Brexit.

This is because an advantage of a pan-European right is the ability of our courts (sitting as community courts) to issue pan-European injunctions against infringing products. Currently you can bring one court action to prevent an infringer selling in all member states of the European Union. This was a mere pipe dream a few decades ago, becoming a reality only as a result of harmonisation of Design Law in 2002, and will be a concept swept away again by Brexit.

Unregistered Community Design

This right gives a UK designer the right to prevent copying of their work in all countries of the European Union for three years from the date on which the design is first marketed in the European Union.

It arises automatically and has vastly improved the situation that existed prior to its introduction where designers who discovered an infringement abroad needed to delve into whether and to what extent that country protected designs.

This right – although granted for a much shorter term than its UK counterpart – also protects elements of a design that are not protected under UK unregistered design rights, including ornamentation, texture and colour.

A Community Design Right is one that exists to protect a product "in all its glory" and is applied if the infringing product gives the same overall impression as the genuine article.

As with registered design right this right will be lost on Brexit. Outside of the European Community a UK designer is very unlikely to be able to qualify for a Community Unregistered Design Right as the right only subsists where a design has been first marketed in a member state of the European Union. In practice UK designers will continue to first market their products here and will not qualify.

Unless the government legislates to amend our existing domestic law, the scope of design protection in the UK will be reduced.

Even if the government acts to include a right akin to the current European Unregistered Design Right into domestic law, with no Community Design Court in the UK the ability to secure pan-European injunction against infringers would still be lost.

Registered UK Designs

These would be unaffected. Outside of Europe, however, there is likely to be continued divergence of the law. The concern is that our courts continue to give narrow interpretation to rights in favour of free competition leading to increased difference in the level of design protection in the UK and Europe.

UK Unregistered Design Rights

This right protects the shape and configuration of a design or any part of a design. Excluded from protection are (i) any aspects of the design which are present so as to be able to be compatible with another article, the so called "must fit must match exception" and (ii) any design which is common place in the design field in question.

This UK right is narrower than the Community Unregistered Design Right in that it does not protect the overall impression given by the design and is limited to protection of the shape and configuration of an article.

For the purposes of this right, the design and the alleged infringement are viewed in black and white. On the plus side it is more flexible than the Unregistered Community Design Right in allowing action to be taken in respect of any part of an article rather than an article as a whole and lasts for a whole ten years from the first marketing of the design.

As with Registered UK Design Right, this right will be unaffected post Brexit. However, there is a sting in the tail. Under our domestic law the UK grants UK Unregistered Design Rights to citizens of certain countries including citizens of all member states of the European Union.

This means that on Brexit – and in the absence of amended legislation – a German, French or Italian designer would benefit from the UK Unregistered Design Right in addition to Unregistered Community Design Rights, giving them protection under both regimes at the same time as UK designs stop benefiting from European Community Unregistered Design rights. Surely this is not what the Brexiteers intended.

What should designers do to protect themselves?

We do not know what the final legal landscape will be with respect to design rights and will not do so for some time to come. This is a period in which much work needs to be done by our government and interested bodies to make sure that designers' rights are protected and the UK remains a creative and innovative country.

Right now, only designs that are new can be registered in the UK or elsewhere. The problem simply filing for a EU wide Community Registered Right alone  is the uncertainty as to how the UK part of any registered right will be preserved.

For this reason it is important that UK designers who want to be sure to benefit from registered rights and the benefit of a 25-year protection period, register designs in the UK as well as in the European Community and should adopt that as their policy going forward.

Finally, one bit of good news. From October 2016 the UK Intellectual Property Office is introducing lower filing fees for design applications. A most welcome break for designers, and a great help as we move towards Brexit and a changing legal landscape.