Friday - 18 August 2017

Simple IP Rights for Export Markets

Cross jurisdictional enforcement of legal rights can be complex. Add intellectual property into that cross-border mix and the assumption might be that complexity would only increase. In the case of registered designs however, that’s not necessarily the case.

What are registered designs?

Registered designs are an intellectual property right which can be used to control the import and export of counterfeit and other infringing goods into the EU, and across its internal borders. Significantly, EU customs authorities can be asked to impound products infringing an EU registered design as they cross EU borders.

Registered designs can be hugely valuable and registration is very low cost. For example, in 2011 a German court granted an EU wide injunction on the basis of a registered design. Registration of that design probably cost a few thousand euros, yet the estimated impact of that injunction was over 100 million euros.

The potential impact of these rights on export/import trade therefore should not be overlooked. Registration should be considered whenever the commercial value of a new product is associated with its appearance.

Protection is available across Europe, and in the UK

It is already possible to obtain design protection in just the UK or in the EU as a whole.

UK-only design registration is cheaper, but the rights it provides are limited to just the UK. However, it is worth mentioning that, unlike some forms of IP, a registered design provides a specific right to prevent exports.  So, UK protection may suffice where the UK is likely to be the main market, or (if tooling cost is significant) is home to the most likely infringers’ manufacturing facilities.

An EU or ‘Community’ Design is more expensive, but it does provide monopoly rights for the entire EU including, for the moment, the UK. This may enable the design owner to scale their business without capital outlay for manufacturing – they can generate revenue by licensing their IP in other EU markets.

A key benefit is that EU design rights can be enforced by customs authorities (anywhere in the EU) to restrict the transport of goods at the border. EU customs authorities will search for and seize suspected infringing products entering or exiting the EU.  Products suspected of infringing an EU design right may be detained and, if necessary, destroyed by those customs authorities without needing court approval.

Will this change after Brexit?

The current working assumption is that as of March 2019 EU design rights will no longer have effect in the UK. At present, we expect that there will be a transitional period during which EU designs can be “converted” to provide equivalent protection in the UK post-Brexit.  However, nothing is confirmed at present. Whatever happens in the UK however, the EU market will remain valuable to UK business, and the need for a competitive edge in that market will certainly not lessen.

Whatever legal and regulatory regime prevails, businesses must position themselves to take maximum advantage. The ability of registered designs to control both exports from the UK, and imports into the UK, and in and from the EU, marks them out as a key commercial tool.  

Want to know more?

Mathys & Squire are experts in obtaining design protection in both the UK and the EU. For more information and to find out how we can help, please contact Sean Leach.