Registered designs - Tuvalu and Montenegro scenarios
This document expands upon the 'Montenegro' and 'Tuvalu' scenarios we outlined in CITMA's 'EU registered rights - designs' document.
We provide additional detail on how issues such as pending applications could be addressed under each scenario, together with brief comments.
The Montenegro model
All existing RCD registrations would be automatically entered onto the UK design register as UK design registrations with the same scope of protection and registration date.
The Tuvalu model
Existing RCD registrations would be entered onto the UK design register, as for the Montenegro model, but only if the owner makes a positive decision to extend them to the UK - probably by filing a form within a set period.
Pending applications
Under the Montenegro and Tuvalu scenarios, RCD registrations are brought on to the UK register. Some provision for pending RCD applications could be required, but it is recommended that no provision be made. Only RCDs which are registered at Brexit are transferred to the UK Register. Those pending at Brexit would remain as RCDs only. Separate UK applications will be required to obtain UK protection (NB potential novelty issues).
Description
When RCDs are converted into equivalent UKRDs, any description filed with the RCD (which as a matter Community design law does not affect the scope of protection afforded to the RCD) shall likewise not affect the scope of protection afforded to the converted UKRD.
Address for service
Many RCD registrations have an address for service outside the UK (but within the EU).
Montenegro: Enter existing EU address for service onto the UK register and require the owner to appoint a UK address for service at renewal, enforcement or other interaction with the UKIPO.
Tuvalu: Nominate UK address for service at opt-in.
Ongoing proceedings
At the date of Brexit there will undoubtedly be ongoing proceedings before the EUIPO, boards of appeal and higher courts concerning RCD registrations. Many, but not all, of these disputes may be relevant to the UK.
Montenegro and Tuvalu: Proceedings do not transfer to the UK, but corresponding proceedings may be commenced in the UK and there would be an option for parties to continue in the EU and be bound by the result in the UK if both parties agree.