International EU Protected Designs After 1st January 2021
Changes for businesses and holders of international EU protected designs after 1 January 2021.
After the transition period, protected international design registrations designating the EU will no longer be valid in the UK.
On 1 January 2021, these rights will be immediately and automatically replaced by UK rights. If you own an existing right, you do not need to do anything at this stage.
Creation of the re-registered international design
For all protected international (EU) designs, we will create comparable UK rights which will be recorded on the UK register.
International design registrations protected in the EU under the Hague Agreement will have no effect in the UK after 1 January 2021.
To address this, we will create a re-registered international design from each International (EU) design that holds a protected status immediately before 1 January 2021.
These UK rights will be identical to the re-registered designs being created from registered community designs (RCD).
They will be independent UK rights, and so may be challenged, assigned, licensed or renewed separately from the original international (EU) design.
Like UK rights being created from RCDs, re-registered international designs created from protected international (EU) designs will be created at no cost to the holder.
Numbering of re-registered design
The number allocated to the re-registered international design will consist of the full IR (EU) number prefixed with the digit ‘8’. This will provide users with a means of identifying re-registered rights created from protected international (EU) designs and distinguishing them from existing UK registered designs.
The following examples demonstrate how these re-registered UK designs will be codified:
International (EU) registration number (as shown on WIPO databases)
International (EU) registration number (as shown on EUIPO’s DesignView database
Re-registered UK design number (as it will be shown on the IPO’s register and online search platform)
D069640-0001 (in this example, the four-digit sequence ‘0001’ denotes a single design)
D069629-0001 (in this example, the four-digit sequence ‘0001’ denotes the first design in a multiple application)
D069629-0002 (in this example, the four-digit sequence ‘0002’ denotes the second design in a multiple application)
If you hold a pending international (EU) design on 1 January 2021, you will be able to apply to register a UK design in the nine-months after 1 January 2021 and retain the earlier filing date of the pending international (EU) right.
We will only be creating re-registered international designs from international (EU) designs that are protected immediately before 1 January 2021.
Automatic creation of UK re-registered international designs will not apply to those international rights that, at 1 January 2021, have not yet been subject to a statement of protection issued by the EUIPO.
The holder of any such ‘pending’ international (EU) design may claim the earlier registration date assigned to the corresponding International Registration by WIPO.
They may do this when applying for UK registered design protection in respect of the same design within nine-months after 1 January 2021.
The IPO will recognize the registration date and any priority date attached to the international registration for the purposes of the UK application.
This will be relevant for the purposes of determining the re-registered international design’s novelty.
Claiming an earlier filing date
On 1 January 2021, if you have sought protection in the EU through an application for an international (EU) design registration, you may also claim the earlier registration date (and any priority date) for a corresponding UK registered design application.
This will be applicable where that application has been published by WIPO, but the period in which the EUIPO must notify WIPO of refusal has not yet expired.
Digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.
These applications will be treated as a UK registered design application. They will be examined under UK law. In these circumstances, the standard UK fee structure will apply. Further information on registered design fees is available.
International (EU) designs that have been subject to a notice of refusal issued by the EUIPO prior to 1 January 2021 cannot be used for the purposes of claiming an earlier date when filing a corresponding UK application.
Opt out of holding a re-registered international design
If you do not wish to claim the new right, you may opt out of holding it.
Owners of protected international (EU) registered designs may opt out of holding a re-registered international design. They can do this through the same opt-out mechanism as is being provided for holders of RCDs and EU trade marks.
If you wish to opt out, you will need to submit a short notice providing the number of the protected international (EU) registered design together with details of any persons with an interest in the right.
Once received and actioned, the effect of such an opt-out is that the re-registered international design will be treated as if it had never been applied for or registered under UK law.
Renewals and restoration
For the purposes of future renewal, the re-registered international design will retain the existing renewal date of the corresponding international registration.
As with re-registered designs created from RCDs, we will send renewal reminder notices to holders of re-registered international designs which are due to expire at any point after the six-month period following 1 January 2021.
New approaches are being introduced to accommodate re-registered international designs that expire within the six-month period following 1 January 2021.
Changes are also being introduced for international registrations that have expired within the six-months prior to 1 January 2021 and which are still in their late renewal period.
Designs which expire 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 will apply to re-registered international designs.
We will send you a reminder renewal notice on the actual day of expiry (or as soon as is practicable after that date). This notice will inform you that the re-registered international design has expired, and that we will provide you with a further six-month period, running from the date of the notice, in which the right may be renewed.
Where the re-registered international design will expire within six- months after 1 January 2021, the usual additional renewal fee will not be payable.
In addition to the new reminder notice being sent on or soon after the day of expiry, those with re-registered international designs that expire within the fourth, fifth and sixth months after 1 January 2021 will also receive the conventional advance reminder notice in the usual manner.
Where the re-registered international design is not renewed, it will be removed from the register but may be restored at a later date in accordance with existing UK law.
You should note that where an international registration’s renewal date falls after 1 January 2021, early payment of the renewal fee at WIPO, on a date prior to 1 January 2021, will have no effect in respect of the re-registered international design.
Any re-registered design with a renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action right and fee. This will be regardless of whether a renewal action was taken on the corresponding international registration before 1 January 2021.
Designs which expire before 1 January 2021
We will also create a re-registered international design from any International Registration that:
has expired in the six-months prior to 1 January 2021
has not been subject to a late renewal action at WIPO by 1 January 2021
is still within its six-month late renewal period
These re-registered international designs will hold an ‘expired’ status. Their continued effect in the UK will be dependent upon late renewal of the corresponding international registration at WIPO.
Where that registration has been subject to late renewal, and the holder has informed the IPO about such action, the late renewal of the international registration will have effect on the expired re-registered international design.
This means that the re-registered design will be renewed as a result of the international registration’s late renewal.
In this scenario, you will not be required to pay any renewal fees in respect of your first (UK) renewal of the re-registered international design.
If the expired international registration is not late-renewed at WIPO, then the re-registered design (which was created on 1 January 2021 in the UK) will be removed from the UK register on expiry of the corresponding international registration’s late renewal period.
It will then be treated as if it had never been applied for or registered under UK law.
Users should note that holders must inform the IPO that their corresponding international registration has been late-renewed at WIPO by emailing email@example.com.
The notice must be submitted within nine-months of 1 January 2021. Failure to provide notification within that period will result in the re-registered international design being removed from the UK register. It will be treated as if it had never been applied for or registered under UK law.
This will be the case even if the corresponding international registration has been subject to late renewal.
Where publication of the international registration is deferred at WIPO
Under the new law, an international registration that is deferred on 1 January 2021 will be treated as being equivalent to a pending application.
This means that a holder can preserve its earlier filing and priority dates in the UK by filing an equivalent UK registered design application within nine-months after 1 January 2021. The publication of an international registration designating the EU may be deferred for up to 30 months.
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.
Deferment of a UK registered design application claiming the earlier date of a deferred international registration will be limited to a maximum of 12-months from the date of UK filing, and may not exceed the maximum thirty-month period permitted for the corresponding international (EU) design.
Our approach to calculating deferment periods for UK applications corresponding to deferred international registrations will be identical to that taken in respect of deferred RCD applications.
This approach is described in more detail in the corresponding section of this guidance relating to RCDs.
A priority date claimed under the Paris Convention that has been recorded against the corresponding international registration will be inherited by the re-registered design. Accordingly, where proceedings involve a re-registered design with a priority claim inherited from the corresponding international registration, the date of that priority claim will have effect.