The future UK-EU relationship on professional and business services Contents

Chapter 7: Intellectual Property

Introduction

143.The UK’s intellectual property regime was described by Anti-Copying In Design to be “one of the best developed and best applied” in the world.195 Shanker Singham added that “service providers particularly benefit from strong intellectual property provisions—across the board”.196 This framework includes protection of both registered and unregistered design rights.

Box 2: Trade marks, registered design rights and unregistered design rights in the EU

An EU trade mark can consist of any signs, in particular words, designs, letters, numerals, colours, the shape of goods, or of the packaging of goods or sounds. To be eligible for registration with the EU IPO the trade mark must be distinctive, and these tend to be logos for companies or services.

An EU registered community design protects the design of the whole or part of a product and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product. Plain or stylised word marks cannot form a registered community design but can form a trade mark. These are registered at the EU IPO and are covered for up to 25 years.

The EU’s unregistered community design regime provides protection for a range of design features, including two- and three-dimensional aspects such as lines, colours, texture, materials surface decoration and product shape. Rights are protected for three years after they are disclosed to the public, without any requirement for registration at the EU IPO.

144.The Intellectual Property Office (IPO), the official UK government body responsible for intellectual property rights including patents, designs, trade marks and copyright, told us that the UK was “looking to negotiate a chapter that secured mutual assurances to provide high standards of protection” for both registered and unregistered design rights. The Minister outlined the Government’s aspirations in this area:

“[Intellectual property] is crucial to our innovative and creative industries. The UK’s regimes are consistently rated as some of the best in the world. Leaving the EU will not change that. We are confident that we can negotiate strong IP chapters without compromising the UK’s domestic framework or what we are looking to agree with the EU.”197

Sam Lowe did not anticipate significant issues in reaching a positive agreement this area as the UK and EU approaches were “broadly aligned”.198

Registered design rights

145.The Design Council highlighted a long-term decrease in the number of design registrations by UK businesses, with registrations “more than halving since 2000”. The reasons for this decline were unclear, but it “could indicate fewer design led or influenced UK exports outside of the EU”.

146.Within the EU, on the other hand, the EU’s Regulation on Community Designs (6/2002/EC) established a one-off procedure for registering designs with the EU IPO.199 This registered design right gives creators exclusive rights to the use of those designs across the EU for up to 25 years, but the Design Council was concerned that in the absence of an agreement EU registrations could also decline in future: “Unless UK-EU arrangements are in place on intellectual property for all sectors, there could be significant negative effect on trade of design led professional and business services with the EU.”200

UK and EU negotiating positions

147.From 1 January 2021 EU trade marks issued by the EU IPO will no longer protect trade-marked goods or services in the UK. Instead, Article 56 of the European Union (Withdrawal Agreement) Act 2020 mandates the UK IPO to create a comparable UK trade mark for all right holders with an existing EU trade mark at no extra cost.201

148.After the transition period, to receive protection in both the UK and EU new trade mark applications will need to be made to both the UK IPO and the EU IPO. Dr Luke McDonagh, said that this was a “doubling of cost problem feared by UK SMEs”.202 He suggested that a discount from the UK IPO for SMEs who intend to apply to both the UK and EU could help reduce these additional costs.203

149.While current EU trade marks will be transferred onto the UK register at no extra cost, we are concerned that at the end of the transition period UK companies could face additional charges if, next year, they are required to register new trade marks at both the UK IPO and EU IPO.

Unregistered design rights

150.Companies and individuals in professional and business services sectors and the creative industries in the UK have been able to seek intellectual property protection through Unregistered Community Designs, which are provided for under the EU’s Regulation on Community Designs (6/2002/EC).204 Unregistered Community Designs provide protection for a range of design features for three years after they are disclosed to the public, without any requirement for registration.205

151.Martin Darbyshire said that unregistered design rights were particularly useful, because they allowed businesses “to explore designs and determine which are commercially viable successful and decide whether to invest in registering them”.206

152.Witnesses warned that losing unregistered design rights in the EU could have a significant impact on UK design businesses. In a survey of their members, Anti-Copying In Design found that 99% were concerned about the loss of unregistered design rights.207 Martin Darbyshire said that without an agreement on unregistered design rights it would be “very challenging for companies”, as they would need to determine whether to register each product brought to the market, before understanding whether it would be successful or not.208 Anti-Copying In Design said that the effects could “potentially be calamitous”.209

UK and EU negotiating positions

153.Under Article 57 of the Withdrawal Agreement, any designs that are protected under the EU unregistered design rights regime before the end of the transition period will remain protected and enforceable in the UK for the remainder of their three-year lifespan as a ‘continuing unregistered design’.210

154.After the end of the transition period, new EU unregistered design rights will no longer have protection in the UK.

155.From 1 January 2021, an equivalent right will be available in the UK known as a ‘supplementary unregistered design’. This is a purely domestic measure which will replace the EU’s unregistered design right for any design first disclosed in the UK. Protection under the UK’s supplementary unregistered design’ will not extend to designs originating in the EU.

156.In addition, in its draft legal text, the Government proposed a reciprocal regime, whereby a design could be disclosed in either the UK or EU and still be eligible for the EU’s unregistered design right which is usually subject to the provision that it must be a ‘novel’ design disclosed within the EU.211 The EU, however, has not reciprocated this provision in its draft legal text.212 Instead, the EU proposal is that the parties can confer and enforce unregistered design rights only within their respective territories.

157.The Government has proposed that unregistered designs presented in the UK should receive protection in the UK and throughout the EU27, and vice versa. We urge the Commission to give the UK’s proposal serious consideration.


195 Written evidence from Anti Copying In Design (PBS0048)

198 Q 12 (Sam Lowe)

199 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, OJ L 0003, 12 December 2001

200 Written evidence from the Design Council (PBS0034)

201 Intellectual Property Office and Government Digital Service, ‘Guidance: EU trade mark protection and comparable UK trade marks from 1 January 2021’, 30 January 2020: https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks#opting-out-of-the-comparable-uk-trade-mark [accessed 8 September 2020]

202 Written evidence from Dr Luke McDonagh (PBS0008)

203 Ibid.

204 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, OJ L 0003, 12 December 2001

205 Written evidence from Anti Copying In Design (PBS0048)

207 Written evidence from Anti Copying In Design (PBS0048)

209 Written evidence from Anti Copying In Design (PBS0048)

210 Intellectual Property Office and Government Digital Service, ‘Changes to unregistered designs from 1 January 2021’, 30 January 2020: https://www.gov.uk/guidance/changes-to-unregistered-designs-after-the-transition-period [accessed 23 September 2020]

211 HM Government, Task Force for Relations with the United Kingdom, Draft working text for a comprehensive Free Trade Agreement between the United Kingdom and the European Union, March 2020, Article 24.28: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/886010/DRAFT_UK-EU_Comprehensive_Free_Trade_Agreement.pdf [accessed 28 September 2020]

212 European Commission, Task Force for Relations with the United Kingdom, Draft text of the Agreement on the New Partnership with the United Kingdom, Article IP.28 (18 March 2020): https://ec.europa.eu/info/sites/info/files/200318-draft-agreement-gen.pdf [accessed 26 August 2020]




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