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Brexit - European Community (EU) Designs and protection in the UK
27 June 2016 by James Cornford

As you have no doubt heard, on 23 June 2016 the UK voted to leave the EU. It will take some considerable time before this happens - we estimate at least two years from June 2016. So what impact does this have on European Community (EU) designs?

No immediate action necessary

In the short term, no immediate action is needed in relation to existing EU design applications and registrations, which continue to have effect in the UK.

As you can imagine, the terms of the UK exit from the EU will be the subject of complex negotiations between the UK and the remaining EU member states. When the UK eventually leaves the EU, any EU design application filed thereafter will likely not afford protection in the UK (depending on the terms of the UK's exit from the EU). At that time, design protection for the UK will likely need to be sought by way of a UK national design application.

The UK is not currently a member of the Hague Agreement for International Registration of Industrial Designs, but the government intends to accede to the Hague Agreement, based on the support received from respondents to a consultation in 2015. If the UK accedes to the Hague Agreement, then design protection may be also sought in the UK via an international application.

National UK protection for important designs and UK-focused businesses?

We anticipate that there will be transitional provisions that either recognise the effect of existing EU registered designs; or provide an option to "re-register" the design in the UK, so that there is continuity of protection in the UK. Exactly how this will come about is not yet clear. Thus, going forward, if you are a UK-based business or the UK is an important territory for you, then you may wish to file both UK national and EU design applications, at least until the transitional provisions are known. Whilst the additional UK application might, in the long term, prove superfluous, filing both applications is the safest option for ensuring that protection for the UK is in place.

We will be offering special rates for co-filed UK and EU design filings - please do not hesitate to contact us if this is of interest. 

Summary

In summary, our advice at this time is not to take any special action in relation to existing EU design registrations or applications as a result of the Brexit vote. However, if your business is UK-focused or the UK is an important territory for you, then, going forward, you should consider filing for UK national design protection as well as EU design protection, at least until the transitional provisions are known.