UK – Brexit reminder of approaching deadline of 30 September for filing GB comparables

Aaron Lucas

UK Brexit Reminder of approaching deadline of 30 September for filing GB comparables

As of 01 January 2021, following the end of the transition period under the EU Withdrawal Agreement, (EU) Community Design registrations no longer extend to the UK. If you had an (EU) Community Design registration as of 01 January 2021, you would have benefitted from the automatic creation of a cloned UK registered right.

What do I need to know about my cloned UK registration?

Cloned UK design registrations (with the prefix “9”) have the same renewal date as the corresponding (EU) Community Design registration but must be renewed independently from your (EU) Community Design registration. Therefore, you will have an independent UK renewal fee to pay in addition to your (EU) Community Design renewals if you want to maintain protection in the UK.

If your cloned UK design registration was based on an (EU) Community Design registration obtained through the designation of EU in an International Registration according to The Hague Agreement, you will also have automatically received cloned UK registrations corresponding to each design in the application (with the prefix “8”). However these cloned registrations do not form part of the International Registration and so a separate renewal fee for each of the cloned UK registrations must be paid to the UKIPO in addition to the central renewal fees paid to WIPO covering the remainder of the International Registration.

Please ensure that your cloned UK registrations have been added to your records and take note of the renewal dates.

What if I had a pending (EU) Community Design application on 31 December 2020?

Owners of pending (EU) Community Design applications on 31 December 2020 were given a nine month period, until 30 September 2021, to file comparable UK design applications mirroring the details of their (EU) Community Design applications, but the UK official fees for the applications must be paid. The comparable UK design applications will be subject to formalities examination by the UKIPO.

Accordingly, the owners of (EU) Community Design applications on 31 December 2020 have the opportunity to file a UK application that benefits from the earlier filing date and priority of their (EU) Community Design application.

(EU) Community Design applications under deferred publication on 31 December 2020 are considered to be pending applications and may therefore provide the basis for a comparable UK application. It is important to note, however, that the maximum deferment period for UK applications is 12 months, far shorter than the 30 months allowed for (EU) Community applications. Therefore, the deadline for requesting publication in the UK should be checked carefully to ensure that it is not missed, and that the potentially earlier disclosure date fits with your design disclosure strategy.

What actions do I need to take?

It is important to take the time to review your pending design portfolio to consider whether you may take advantage of these provisions to file a comparable UK design application and that the associated deadline, and the deadlines related to your cloned UK registrations, are being monitored.

If your IP portfolio is managed by our firm, rest assured that we will be ensuring you are well informed of your options in good time before the 30 September 2021 deadline and that all deadlines are being monitored.  Get in touch to find out more.

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