Unregistered Community designs (“UCDs”) are particularly attractive to the fashion industry as they protect surface decoration, unlike UK unregistered designs. However, in order to qualify for protection as a UCD, the design must be disclosed for the first time within the European Union. Whether “within” the EU means that: a) the disclosure must take place within the geographic confines of the EU; or b) the design could reasonably have become known to designers operating within the EU (as is the case for novelty destroying prior art), is unclear and is subject to academic debate. Unfortunately a UK case that referred this question to the CJEU [1] settled before the CJEU could answer it, and so the position remains unresolved. That said, it is the more widely accepted view, especially considering the protectionist position of the EU, that the  disclosure must be made geographically within the EU in order for the design to obtain UCD protection.

What this means in the context of Brexit is that after the end of the Transition Period (on 1 January 2021), designs that are first disclosed in the UK (for example at London Fashion Week) are unlikely to qualify for protection as a UCD as the disclosure took place outside the geographic territory of the EU, but also, a prior UK disclosure would destroy the novelty of a potential UCD, and so the design will not enjoy EU-wide protection as it may have done before.

The fashion industry lobbied hard against this position, in particular because of concerns that this limitation on protection would result in designers not first disclosing designs in the UK and the potential demise of London Fashion Week as a result.

The lobbying resulted in the UK government: a) creating a new UK “Supplementary Design Right”   which mirrors the protection for UCDs but limited in territory to the UK; and b) proposing in its Draft UK-EU Comprehensive Free Trade Agreement [2] that disclosure of a design in the territory of the EU or the UK will satisfy the disclosure requirement for a UCD in the EU. In effect this proposal meant that a designer could first disclose a design in the UK without that design being disqualified for UCD protection. Unfortunately, the UK’s proposal fell on deaf ears: according to a letter sent from the UKIPO to stakeholders, the EU refused to extend qualifying disclosures to the UK.

The result is a blow to the fashion industry: if designers first disclose their designs in the UK, those designs most likely will be disqualified for protection as UCDs and so potentially leave those designs vulnerable to copy cats in EU markets.

So what can designers do to best protect their designs in the light of this disappointing news? Here are a few suggestions:

• Implement registered design filing strategy: registered UK and Community designs are relatively cheap and easy to obtain (multiple design applications offer cost savings and designs aren’t examined) and the grace period means that the designs  can be tested on the market for 12 months before the business commits to filing.
• Consider key markets before making first disclosure: after 31 December 2020, disclosing a design first within the EU will exclude a design from Supplementary Design Right protection in the UK, and disclosing a design first in the UK will exclude a design from UCD protection in the EU. Of course, in the case of the latter, the design could still qualify for protection as a UK Unregistered Design Right, but this will not protect surface decoration elements of the design. With this in mind, it is important to choose where to make the first disclosure so that one obtains protection in key markets for the product.
• Consider simultaneous disclosure in EU and UK: launching a design digitally (e.g. on social media or in a livestream fashion show) may get around the qualifying first disclosure/novelty disclosure conundrum. However this hasn’t been tested in the courts and in the case of a livestream of a UK fashion show, the millisecond delay of the stream may mean that the first disclosure happened in the UK.
• Disclose in the UK first but under strict confidentiality obligations: this may be attractive to high end brands who wish to disclose at exclusive “private viewings”.
• Consider relying on copyright in designs: mass-produced fashion items generally do not qualify for protection in the UK. In order to be protected as a copyright work the item must fall within the definition of an artistic work, specifically a "work of artistic craftsmanship", and the UK Courts have traditionally been reluctant to find that garments are protectable as artistic works. However, the UK’s closed list of works has been called into question in recent case-law, so we may see developments in the UK law in this area, particularly post-Brexit.

[1] Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 (IPEC)

[2] The draft text which is used by the UK government as the basis for its negotiations with the EU on the EU-UK trade deal.