The United Kingdom officially withdrew from the European Union on January 31, 2020. Since then, the 11-month implementation period has been running, during which time most of the obligations and benefits of the UK’s membership in the European Union – including legal provisions relating to intellectual property laws, data protection regulation, and decisions from the Court of Justice – have continued to apply. That is slated to change on January 1, leaving UK-based rights holders – fashion brands, included – in a new and potentially challenging position.
Among the noteworthy changes that will be in play when the transition period comes to a close at the end of the year? One that centers on unregistered designs. In accordance with this new development, which was revealed amid enduring exit negotiations between representatives for the EU and UK, designs that are first disclosed in the United Kingdom – as opposed in to a remaining EU state – will no longer be eligible for protection as unregistered designs in the EU.
At the heart of the impending change is the EU’s unregistered Community design right (“UCD”) regime, which provides automatic protection for the original elements of a design, including the “appearance, physical shape, configuration (or how different parts of a design are arranged together), and/or decoration.” Co-existing with a separate registered design right, which comes with a longer duration for protection but requires a formal filing, the UCD system provides creators with rights for their designs for a period of three years from the date that the a design was first made available – or “disclosed” – to the public.
For fashion industry entities, disclosure may come in the form of showing a design for the first time on the runway, presenting it in a lookbook, or alternatively, simply sending an otherwise unrevealed design straight to stores and/or advertising the design on its website.
Previously, that disclosure – whether it be a lookbook released online, for example, or a seasonal collection shown during fashion week – could take place in any of the EU member states, including the UK, and automatic protection against infringement would commence. Now, however, with the UK having left the 27-member union, the permissible disclosure territory changes. As a result, Osborne Clarke attorneys Arty Rajendra, Sophia Christou, and Robert Guthrie say that British brands seeking rights for their designs will have to “be creative in how they use other options to fill the gap after the end of the Brexit transition period.”
To be more specific, the impending change means that designers that plan to rely on unregistered design rights “will need to think carefully about where they first disclose their designs.” While designs that are first disclosed in an EU member state by a UK-based brand will continue to be protected by the UCD in the EU after December 31, that protection will not give rise to any causes of actions in the UK. At the same time, Rajendra, Christou, and Guthrie note that for a design that is first disclosed in the UK, protection will only exist for the design in the UK – by way of a “new ‘supplementary unregistered design’ regime providing similar protection to the EU unregistered design right will be introduced in the UK in January 2021” – and not in the broader EU.
Against that background, they say that UK designers and businesses “will need to weigh up which is more important: UK or EU unregistered protection? Or they will need to come up with innovative ways to try to achieve simultaneous UK and EU disclosure,” which could presumably be achieved by showing on the runway and via livestream in tandem (as many brands currently do), while “bearing in mind it will be up to the courts to decide what effect simultaneous disclosure could have under the new regime.”
Hardly an inconsequential change, they argue that the new UCD regime will deal “a serious blow to UK designers and businesses.” Why will fashion be particularly impacted? Because fashion and other fast-moving, seasonal industries tend to rely heavily on the UCD system, according to Bird & Bird LLP’s Tristan Sherliker, “since the high volume and turnover rate [of the industry] often makes registering designs impractical” in much the same way as design patent protection largely proves less than ideal for anything but non-staples items in the U.S.
“There are other rights that can fill the gap” that will be left by the shift in the UCD system, Rajendra, Christou, and Guthrie assert, pointing to “design registrations or copyright” as among some of the options are available to UK designers. Ultimately, with such impending changes in mind, they encourage brands to “use their creativity in considering how best to use those options to protect their valuable designs after Brexit.”