The transition period provided for under the Agreement on the Withdrawal of the United Kingdom (UK) from the European Union (EU) will end on December 31, 2020.
The Government of the United Kingdom has informed the International Bureau of the World Intellectual Property Organization (WIPO) of the steps it will take to deliver continued protection in the United Kingdom to industrial designs in international registrations that have been protected in the European Union before the end ofthe transition period. It will also preserve the rights of applicants and holders of pending international applications or international registrations, designating the European Union, at the end of the transition period.
As of January 1, 2021, the designation of the European Union in international applications and international registrations will no longer have effect in respect of the United Kingdom.
However, if the international registration has been protected in EU before the end of the transition period, the United Kingdom will automatically create an equivalent national design right (so-called “re-registered international design”) at the end of the transition period. The Intellectual Property Office of the United Kingdom will record such re-registered international designs in its Register, without any procedure required from the holder of an international registration.
Applicants whose international applications designate the European Union and are pending at the end of the transition period will be able to file an application with the UKIPO within nine months from the end of the transition period, retaining the filing date of the international application. This is also applicable for holders whose international registrations designating the EU have not been the subject of a statement of grant of protection issued by the European Union Intellectual Property Office (EUIPO) with a date prior to January 1, 2021.
The end of the transition period will not negatively affect the rights of applicants to file an international application or of holders of existing international registrations who are nationals of or domiciled in the United Kingdom, have a habitual residence or a real and effective industrial or commercial establishment in this country. The reason is that the United Kingdom is a Contracting Party to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
After the end of the transition period, those having entitlement solely through the United Kingdom will no longer be able to claim entitlement through the European Union in an international application or, as the new owner, in a request for the recording of a change in ownership. Instead, they should claim entitlement through the United Kingdom.