Fashion houses and clothing companies used to enjoy protection in both the United Kingdom and the 27 European Union member countries under Registered and Unregistered Community Designs. However, now the Brexit transition period is over, such registered and unregistered design rights no longer extend to the UK. With that in mind, here is a look at some of the changes to design protection that the fashion industry – including British fashion brands – may encounter now that the UK is outside the EU’s designs regime.
For the uninitiated, Unregistered Community Designs – or “UCDs” – provide automatic, short-term, EU-wide protection against copying for new designs. This protection is accrued automatically upon the first publication of the design (such as the debut of a design on a runway or in an ad campaign), regardless of whether the brand or designer has applied for protection as a registered design. Now that the UK has formally left the EU’s designs regime, UCD protection no longer covers the UK, as it only applies to EU member states. Like the EU, the UK provides automatic short-term protection for any new designs upon first publication. In the UK, these UCD-equivalent rights are known as Supplementary Unregistered Designs, which were recently created in order to replace the loss of UCDs in the UK.
Importantly, both the EU and the UK require that for such unregistered protection to subsist, the first global publication of the design must occur in the territory of the EU or UK respectively. It follows that while brands/designers that take part in EU events, such as Paris or Milan Fashion Week, will obtain UCD protection in the EU, that very disclosure of their designs in the EU will preclude them from obtaining the equivalent protection in the UK. Likewise, brands/designers that launch their new designs in the UK, such as at London Fashion Week, will automatically obtain Supplementary Unregistered Design protection in the UK, but will be unable to obtain UCD protection in the EU.
With that in mind, businesses must choose carefully where they want to initially launch their new products to ensure that appropriate design protection is born.
Currently, it is not clear whether attempts to publish a design simultaneously in both the UK and the EU by publishing a brand’s seasonal lookbook on its website, for instance, or via social media, would allow protection to be obtained in both jurisdictions. Unfortunately, there is no relevant precedent in EU or UK law on this point at present and, until we have clarity from the courts, there is a risk that simultaneously publishing in both the UK and the EU could inadvertently kill both rights, since neither could claim to genuinely be the first global publication of the design.
In addition to UCDs, the EU provides protection for Registered Community Designs – or “RCDs.” In contrast to UCDs, RCDs do not arise automatically. Instead, they can only be obtained by application to the EU Intellectual Property Office. The UK also has its own form of registered design protection, namely UK Registered Designs (“UKRDs”), which are very similar in substance to RCDs but exist in the UK only. As with RCDs, UKRDs can only be obtained by submitting an application to the UK Intellectual Property Office.
In general, registered designs (both RCDs and UKRDs) provide two major advantages over their unregistered equivalents (UCDs and Supplementary Unregistered Designs). First, registered designs can be renewed up to a maximum term of twenty-five years, as compared to the maximum three years’ duration of an unregistered design. Second, while anyone enforcing an unregistered design has to prove that copying has taken place, registered design protections enable a rights holder to act against third-party products that merely create the same “overall impression” as the registered design, regardless of whether there was proven copying or not. As such, registered designs provide a true monopoly right, with a notably lower bar to enforcement than unregistered designs.
Before Brexit, all RCDs were enforceable in the UK. At the start of this year, all live RCDs were copied or “cloned” onto the UK designs register to ensure that protection in the UK for RCD holders was not lost. (The same exercise was done with EU trademarks to create comparable UK trademark registrations.) The cloned UKRDs are separate and distinct from the RCDs upon which they are based, which means that they must be renewed and enforced separately.
Today, if registered design protection is required in the UK, as well as the EU, it is now necessary to apply for RCD and UKRD protection separately.
Mitigating Future Risks
So, where does all of this leave European fashion designers? Despite the extreme disruption caused to retail by the Covid-19 pandemic – from intellectual property aspects to the impact of new VAT and customs rules, the UK still has huge sales of fashion goods. As a result, regardless of Brexit, it remains an important market for apparel and accessories originating from the EU. There is, therefore, a need to ensure that appropriate protection arises in both jurisdictions.
To mitigate the risk of being unprotected at home or abroad, a prudent investment for fashion industry businesses would be to apply for both UK and EU registered designs to cover new products. Unlike their unregistered equivalents, UK and EU registered designs have no requirements regarding the territory of first publication, and so, it is possible to simultaneously hold protection in both the UK and the EU. Therefore, new products launched at Paris or Milan fashion weeks can still be protected in the UK under a UKRD, and those launched at the London fashion week can still be protected in the EU under an RCD.
The importance of obtaining registered design protection, particularly in the fashion industry, is demonstrated by a recent case in the UK, in which an RCD for a shoe was successfully enforced, while the corresponding UCD was not enforceable because copying could not be substantiated. Although obtaining registered design protection is not free, the costs are inexpensive compared to most other intellectual property rights. Furthermore, given the lower bar to enforcement of registered designs compared to unregistered designs, the broader protection they provide should be highly attractive to fashion industry businesses looking for robust pan-European protection.
Gregory Carty-Hornsby is a Chartered and European Patent Attorney and a European Design Attorney at Marks & Clerk.