The UK left the EU on 31st January 2020 with the transition period ending on 31st December 2020. From 1st January 2021, EU design regulations were no longer in force in the UK, posing several questions.
Firstly, would there be any UK protection for existing Unregistered Community Designs (UCDs) with a remaining term? Secondly, what would bridge the gap between the different protection offered by UK Unregistered Design Rights (UKURDs) and UCDs?
Fortunately, The Withdrawal Agreement addressed these issues by creating two new types of unregistered design rights in the UK. The two new design rights are the Continuing Unregistered Design (CUD) and the Supplementary Unregistered Design (SUD).
Continuing Unregistered Designs (CUDs)
CUDs were created as copies of UCDs so that proprietors of existing UCDs, before 1st January 2021, would not suddenly lose protection in the UK. The term of CUDs is the remainder of the 3 years of the equivalent UCD. Seeing three years have passed from January 2021, CUDs are no longer in force in the UK. They may however still be enforced for historic infringements, given the UK’s six year limitation period for bringing claims of infringement.
Supplementary Unregistered Designs (SUDs)
SUDs were created to afford identical protection to UCDs post-Brexit, but in the UK rather than the EU. The UK already had UK Unregistered Design Rights (UKURDs) prior to Brexit, however the SUD rights offer slightly different protection to UKUDRs.
UKURDs may have a longer term (of 10-15 years) than SUDs however, UKURDs only protect 3D parts of design. In contrast, SUDs protect 3D and 2D parts, including surface decorations. Additionally, a more subtle difference exists in the validity requirements of UKURDs and SUDs. For a design to be protected by UKURDs the design must be original and not ‘commonplace’. UCD protection arises for designs which are novel and possess ‘individual character’. The ‘individual character’ requirement for SUDs is arguably a higher bar for design protection.
Designs are eligible for SUD protection if they have been made available to the public after January 2021 by being published or exhibited, used in trade or otherwise disclosed except where those events could not have become known in the normal course of business to the circles specialised in the sector operating within the United Kingdom’.
The key difference between UCDs, UKURDs and SUDs are summarised in the table below.
| UCD and CUD | UKURD | SUD | |
| Term length | 3 years | 10-15 years | 3 years |
| Protection | 2D & 3D parts
Functional features excluded |
3D parts and functional features | 2D & 3D parts
Functional features excluded |
| Eligibility | First made available to the public in the EU | First marketing in the UK by a qualifying person | First made available to the public in the UK |
| Originality requirements | Novel and possess ‘individual character’ | Original and not ‘commonplace’ | Novel and possess ‘individual character’ |
Eligibility criteria differs between UCDs and SUDs. At first glance, this difference seems to suggest that UCDs and SUDs can’t exist simultaneously, however one way to address this might be by making online disclosures. Designs marketed online are disclosed simultaneously and therefore arguably fulfil the ‘first made available to the public’ requirement in both the EU and the UK.
The ‘first made available to the public’ requirement seems to have two possible interpretations, namely ‘first’ means either ‘first in the world’ or ‘first in a specific territory’. The latter interpretation would mean that disclosure in one territory followed by a second disclosure in a second territory would provide unregistered design right protection across both territories.
This interpretation provides more of an incentive for products to be brought to market in new territories because protection can be obtained there. This incentive would presumably improve investment in designs and the diversity of designs in a particular marketplace. Although at present there is a lack of guidance on the meaning of ‘first made available’, hopefully the Courts will consider online disclosures as simultaneous disclosures in multiple territories, and take the ‘first’ means ‘first in a specific territory’ interpretation.
Of course, it still remains the case that registering designs in both jurisdictions is usually preferable. However, in fast paced industries where commercial designs are turned over quickly, or have functional features, unregistered designs can be very useful. Meeting the requirements to obtain SUDs should not be overlooked as they can be useful in increasing design protection.
Please contact Ela Kucharska, or your usual CSY representative, if you would like specific advice on unregistered rights.