One of the most important things to fashion designers are their designs. Articles of clothing or footwear which appear in fashion shows can, within a very short time, appear in low cost stores as copies of the originals.
Fashion designers have a number of ways to try to prevent this including using various design rights available to them in the UK and the EU. However, once the UK exits the EU, it is likely that EU designs will no longer be a protection option available to them in the UK.
There are currently 4 design regimes in the UK – UK registered designs, EU registered designs, UK unregistered design rights, and EU unregistered design rights.
If EU registered designs no longer apply to the UK after Brexit, it will still be possible to rely on UK registered designs. However, many fashion designers do not seek registration of their designs because although it is relatively quick and cheap it is not feasible to register designs for every item in a collection. Therefore designers often rely on unregistered design rights. Until the UK exits the EU, relying on EU unregistered designs is possible. However the UK unregistered design right differs from the EU and therefore the same protection may not be available going forward.
Designers need to therefore consider their design protection strategy now to avoid being prejudiced at a later date by the uncertainty of Brexit.
UK and EU registered design rights
Brexit is unlikely to have much effect on UK registered designs. This is because both the EU and UK registered design rights mirror each other. Therefore brand owners who wish to protect new designs can either (a) apply in the EU now and wait for (we hope) a conversion process to UK design rights or (b) apply in the EU and UK concurrently (which may result in a temporary duplication of rights). We recommend that at this stage designers opt for (b) as the form the conversion process will take and whether it will involve a further cost, examination process, or a specific opt in process is uncertain.
However, this step can only be taken in relation to new designs as it is not possible to re-file now for UK designs which have previously been registered as EU designs.
UK and EU unregistered design rights
Brexit will have a bigger impact on unregistered designs as the UK unregistered design right does not mirror the EU right.
The scope of protection provided by the UK unregistered design right is different and it is not possible to protect surface decoration, patterns and colours. Therefore when the UK exits the EU the protection afforded by EU design rights in relation to surface decoration or patterns will no longer apply in the UK and, unless registered, will be readily available for copying by third parties. In some situations, copyright may be used for protection but this will not apply in all cases.
Also, products that have been first made available in the UK will no longer be available for protection under the EU unregistered rights regime and therefore copies could be made throughout the EU with UK rights holders possibly being unable to prevent such copying.
If the UK government listens to brand owners it is to be hoped that some mechanism will be put in place for amending UK law so that unregistered design rights incorporate the same rights as EU unregistered design rights after Brexit.
However, before then brand owners should consider filing in the UK and the EU for important designs.
Explanatory table of rights:
Sarah Redmond is a senior trade mark attorney and Stephen Sidkin is a partner at Fox Williams LLP