The UK formally left the EU on January 31 2020, although there is a transitional period running until December 31 2020, and there is a chance that this may be extended. Much has been written about the consequences of Brexit for IP rights.
One consequence that has received little attention is the fact that holders of EU design registrations, registered community designs (RCDs), may end up with increased geographical coverage after Brexit – this includes owners of international design registrations (under the Hague Agreement) that designate the EU, as may owners of pending RCD applications.
At the end of the transitional period, a new UK design registration will automatically be created to correspond with every RCD. Moreover, anyone who has an RCD application pending on the final day of the transition period will have the right to file a corresponding UK application, and that new UK application will retain the filing and/or priority date of the RCD application. This process has been referred to as 'cloning'.
An issue that has not received much attention is the fact that a UK design registration automatically covers (or in a few cases may on application cover) many other countries or jurisdictions, something that does not apply to RCDs. The effect of this is that owners of newly-created UK registrations (former RCDs), as well as owners of corresponding UK applications (as defined in the previous paragraph), may end up with increased geographical coverage.
The reason why we say 'may' rather than 'will' is that there are some uncertainties. Article 54 of the withdrawal agreement allows for the creation of 'a comparable registered and enforceable intellectual property right in the United Kingdom', but there is no express provision which deals with a possible extension of geographical coverage. This poses the question as to whether a cloned UK registration that offers the potential of more geographical coverage than the original RCD registration is truly 'comparable'? The answer is open to interpretation, and may require judicial input following the transitional period.
In summary, it is worth bearing in mind that many of these countries and territories are in the process of either developing or amending their IP laws, so things may change.
Similar considerations apply to European Union trademarks (EUTMs), although fewer countries and territories are involved.
|List of the countries and territories to which UK design registrations automatically extend|
|British Indian Ocean Territory||Automatic|
|British Virgin Islands||Automatic|
|Eswatini* (formerly Swaziland)||Automatic|
|Falkland Islands and Dependencies (South Georgia and South Sandwich Islands)||Automatic|
|Isle of Man||Automatic|
|St Helena and Dependencies (Ascension and Tristan da Cunha)||Automatic|
|Saint Kitts and Nevis||Automatic|
|* Re-registration of a granted South African design is also possible for Eswatini|
|List of the countries and territories to which UK design registrations can be extended on application|
|Jurisdiction||UK Design||Automatic or re-registration|
|Cayman Islands||Re-registration||Application may be made at any time during the life of the UK registration|
|Guernsey||Re-registration||Application may be made at any time during the life of the UK registration|
|Guyana||Re-registration||Application must be made within three years of registration in the UK|
|Jersey||Re-registration||Application must be made within three years of registration in the UK|
Margaret Le Galle, St Helier, Jersey
Craig Kahn, Pretoria
John McKnight, Johannesburg
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