Pan – European Design Protection: Considerations for the Fashion Sector Post – Brexit

Chartered (UK) and European Trademark Attorney for Marks & Clerk LLP, Gregory Carty-Hornsby discusses the impact of Brexit on design protection for fashion designers, and highlights the lack of clarity around protection for brands which might wish to publish a design simultaneously in the UK and EU.

Fashion houses and clothing companies have historically enjoyed protection in both the United Kingdom and across the 27 countries in the European Union under Registered and Unregistered Community Designs (RCDs and UCDs). Now the Brexit transition period is over, such RCDs and UCDs no longer extend to the UK. Below, we take a look at some of the changes to design protection which the fashion industry may encounter going forward now the UK is outside the EU’s designs regime.

Unregistered Designs

UCDs provide automatic, short-term, EU-wide protection against copying for new designs. This protection is accrued upon the first publication of the design, regardless of whether the designer has applied separately for protection under a registered design. However, now that the UK has formally left the EU’s designs regime, UCD protection no longer covers the UK.

Like the EU, the UK also 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 (SUD). SUDs have been created to replace the loss of UCDs in the UK.

Importantly, both the EU and the UK require that for unregistered protection to exist, the first global publication of the design must occur the EU or UK respectively. A design debuted in the UK will preclude a designer from enjoying unregistered rights in the EU.  Therefore, fashion designers debuting their lines at EU exhibitions such as Paris or Milan Fashion Week will automatically obtain UCD protection covering the EU, but will be unable to obtain the equivalent SUD protection in the UK. Likewise, fashion designers who launch their new designs in the UK will automatically obtain SUD protection covering the UK, but will be unable to obtain UCD protection in the EU. Consequently, businesses must take care to choose where to initially launch their new products to ensure that appropriate unregistered design protection subsists.

Currently, it is not clear whether attempts to publish a design simultaneously in both the UK and the EU, for example online 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.

It is an area that brands are most likely watching closely as digital launches become more and more common – with this year’s London Fashion Week serving as the perfect example, where big names such as Dior and Burberry announced audience-free shows available to watch via livestream.

Registered Designs

RCDs also provide protection for designs in the EU. In contrast to UCDs, RCDs do not arise automatically. 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). UKRDs are very similar in substance to RCDs but only cover the UK . As with RCDs, UKRDs can only be obtained by application, but in this case to the UK Intellectual Property Office.

In general, registered designs (both RCDs and UKRDs) provide two major advantages over their unregistered equivalents (UCDs and SUDs). Firstly, 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. Secondly, whilst anyone enforcing an unregistered design has to prove that copying has taken place, registered designs protect against third party products which merely create the same “overall impression” as the representations filed with the design, regardless of whether there was copying or not. As such, registered designs provide a true monopoly right, with a 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 trade marks to create comparable UK trade mark registrations. The cloned UKRDs are separate and distinct from the RCDs on which they are based. This 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, the UK still has huge sales of fashion goods, and so, regardless of Brexit, remains an important market for apparel and accessories originating from the EU. Indeed, in 2019, articles of apparel and clothing accessories were the UK’s ninth-largest export to the EU, valued at £5.3bn[1].  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 week can still be protected in the UK under a UKRD, and those launched at events such as 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 [Rothy’s v Geisswein] in the UK. Here, an RCD for a shoe was successfully enforced, whilst 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.

Marks & Clerk has a talented team of UK and EU designs specialists dedicated to helping our clients maximise their design protection – more information can be found at www.marks-clerk.com.

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[1] https://researchbriefings.files.parliament.uk/documents/CBP-7851/CBP-7851.pdf