Changes to EU and international designs and trade mark protection

Last updated 15 February 2022

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), or via an international registration filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO).

What changed after the end of the transition period

When the transition period relating to the UK's exit from the EU ended on 1 January 2021, registered Community designs (RCDs) and unregistered Community designs (UCDs) were no longer valid in the UK.

These rights were immediately and automatically replaced by UK rights. If you owned an existing right, you did not need to take any action.

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

• a UK registered design granted by the IPO (protection in the UK)
• a registered Community design granted by the EUIPO (protection in the EU)
• an international registration designating either the UK or the EU, filed under the Hague Agreement at WIPO

The following unregistered design protection is also available:

• UK design unregistered design right
• supplementary unregistered design (in the UK)
• EU unregistered Community design
• continuing unregistered designs provide protection in the UK for any unregistered community designs which existed before 1 January 2021 for the remainder of the 3-year term

Since 1 January 2021, any existing RCDs, UCDs, European Union Trade Marks (EUTM), and International (EU) designs and trade marks only provide protection in the remaining EU member states.

Registered design

Creation of the re-registered design

All registered and published RCDs now have re-registered UK designs, which are recorded on the UK register. These are treated as if they had been applied for and registered under UK law.

The legislative changes introduced in the UK ensured that the holder of an RCD was provided with the equivalent UK right. They retained the registration and application dates recorded against the corresponding RCDs and inherited any priority dates.

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

Re-registered designs were created at no cost to the RCD holder, and the IPO ensured that minimal administrative burden was placed upon the right holder.

Pending applications

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

If you held a pending RCD application on 1 January 2021, you were able to apply to register a UK design in the nine months after the end of the transition period (up to and including 30 September 2021) and retain the earlier filing date of the pending RCD.

To do so, the UK application had to relate to the same design as that filed in the pending RCD application. If the details of the UK application did not match those of the corresponding RCD application, then the earlier EU date(s) were not recognised.

These applications were treated as UK registered design applications. They were examined under UK law. In these circumstances, the standard UK fee structure applied.

Effect of priority claims

A priority date claimed under the Paris Convention which was recorded against the corresponding RCD was 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, the IPO created UK re-registered designs for all registered Community designs (RCDs) registered at 31 December 2020. This included registered Community designs which were 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 were subject to ongoing invalidity proceedings at the end of the transition period have been recorded on a dedicated list on the IPO website.

• Designs - Invalidity Procedure Pending at EUIPO at 31 December 2020 (MS Excel Spreadsheet, 25.1K)

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 the IPO by any person. The IPO will also initiate the invalidation of a re-registered right or direct another party do to so if the IPO becomes aware that the corresponding RCD has been invalidated.

If you are the owner of the re-registered design sending the IPO 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 the IPO an invalidation notice, the IPO 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 the IPO becomes aware that an EU right is cancelled, then the IPO 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 them know this. The IPO 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 changes set out above in relation to RCDs and International Trade Marks (EU). Other changes were made to UK legislation on designs and trade marks for the effective administration and implementation of re-registered designs and comparable rights.

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.

Why the IPO changed UK design and trade mark law

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

As a result, the IPO amended existing legislation to ensure that UK protection granted by these rights was preserved and to allow UK law to continue to function effectively.

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

Numbering of re-registered design

The number allocated to the re-registered design consists of the full RCD number prefixed with the digit'9’.

This provides 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 are codified:

Existing RCD number	Re-registered UK design number
004048098-0004	90040480980004
000000021-0001	90000000210001

Opt out

The IPO created approximately 700,000 re-registered designs on 1 January 2021 and the IPO recognises that some RCD holders may not have wanted to have been granted such a right.

Holders of the new right can 'opt out’ of holding it. Opting out means that the re-registered design is 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 the IPO 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.

The IPO has created a notice template which you should use when requesting an opt out.

The template is available on the IPO's trade mark forms and design form web pages. Once the IPO has received a request, the IPO will send you confirmation that the right has been removed from the UK register.

Renewals and restoration

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.

A separate renewal fee applies to both the 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 retains the existing renewal date of the corresponding RCD. Under existing UK law, the IPO sends a renewal reminder to any UK registered design owner whose right is due to expire, and the IPO does so in advance of the expiry date. This practice is 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, the IPO adopted a new procedure.

The IPO also changed the law to accommodate RCDs that expired in the six months before 1 January 2021, and which were still in their late renewal period after the UK left the EU.

Designs which expired six months 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 applies to re-registered designs.

You would have been sent a reminder renewal notice on the actual day of expiry (or as soon as is practicable after that date). This notice informed you that the re-registered design had expired, and provided you with a further six-month period, running from the date of the notice, in which the right could be renewed.

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

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

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

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, had 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 is 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 expired before 1 January 2021

The IPO also created a re-registered design from any RCD which:

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

These re-registered designs held an 'expired’ status. Their continued effect in the UK was dependent upon late renewal of the corresponding RCD at EUIPO.

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

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

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

It was then 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 were only created from RCDs which are registered within six months of its renewal date prior to 1 January 2021.

Therefore, EU rights which were not registered on that date but which were subject to reinstatement did not automatically result in the grant of re-registered designs. To address this, the new law provided 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 notified the IPO of such action, the IPO would have created a re-registered design.

Reinstatement of EU rights could only occur where the application was made to the EUIPO within one year of the missed deadline.

If you held an RCD which was reinstated after 1 January 2021, and you were not granted a re-registered design, you should have informed the IPO within six months of the RCD’s restoration.

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

You could have done 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 was deferred on exit day was 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 could 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, that being up to and including 30 September 2021.

The application would not have been the subject of a substantive examination, because the RCD had 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 was subject to deferment at the EUIPO, and a corresponding UK application was made which seeks to retain the earlier RCD dates and requested UK deferment.

1 January 2021 filing date of deferred RCD	Amount of maximum RCD deferment period remaining at 1 January 2021	Post-January 2021 filing date of UK application	How long publication will be deferred
1 October 2018	3 months (ie until 1 April 2021)	1 March 2021	1 month (ie until 1 April 2021, when corresponding RCD deferment period expires)
1 January 2020	18 months (ie until 1 July 2022)	30 September 2021	9 months (ie until 30 June 2022, when corresponding RCD deferment period expires)
1 November 2020	28 months (ie until 1 May 2023)	30 September 2021	12 months (ie until 30 September 2022, when UK deferment period expires)
31 December 2020	30 months (ie until 31 June 2023)	31 March 2021	12 months (ie until 31 March 2022, when UK deferment period expires)

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.

UK design and international design and trade mark law

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.

The IPO has changed UK design and trade mark law

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

Further 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

First published 25 November 2020