Gift Focus - Nov/Dec 2019 (Issue 116)

98 The B-Word ACID’s Dids Macdonald helps you understand your design rights, post-Brexit Currently, the majority of UK designers rely on unregistered EU and UK design rights. Unregistered EU design rights arise automatically and last for three years. An unregistered EU design protects the shape, colour, contours, lines, ornamentation, texture and shape. A UK unregistered design protects the shape and configuration of a design for 10 years after it was sold or 15 years after it was created, whichever is earliest. Despite an election, post Brexit, deal or no deal, UK designers will no longer have EU unregistered design protection in EU27. The Government has gone some way to addressing this with the promise of the introduction of a supplementary unregistered design right, which will mirror the broader EU protection. However, this will only offer protection in the UK. Despite repeated and consistent requests to Government, there’s been no leadership or advice on this anomaly and designers have been asked to seek guidance from IP lawyers. In a nutshell, unless there’s simultaneous publication of an unregistered design in both UK and EU, EU27 protection for unregistered designs will not be available. A key benefit of ACID membership is access to our legal affiliates all of whom are experts in design and trade mark law so, if you’re an ACID member, in the absence of Government advice, they are an excellent resource. CURRENT CASE STUDY In a recent court case involving Beverly Hills Teddy Bear Company (BHTBC) and PMS International, (claimant v defendant), His Honour Judge Hacon has decided that clarity is needed on what designers can rely on in terms of disclosure. He has therefore referred this case to the EU Court of Justice (CJEU). This is a particularly important case for ACID members and the broader UK design community. The designs in question are six soft toys called Squeezamals that BHTBC believe have been copied by PMS. The CJEU decision will have significant implications for UK designers and in Judge Hacon’s words, this is a matter of “widespread interest” especially in light of what may happen after Brexit, deal or no deal, regarding the potential loss of EU unregistered designs in EU27 for most UK designers. The issue to be clarified is that there must be an event of disclosure that takes place in a territory of the EU, or would it be enough that the event, wherever it takes place, could reasonably have become known to the relevant circles within the EU? ACID wrote to the Prime Minister on this subject and recently