World Intellectual Property Review quotes Olivia Gray on the post-Brexit treatment of design rights

The Court of Appeal of England and Wales has clarified the post-Brexit treatment of design rights, confirming that parties cannot revive cases that were already settled before EU courts prior to Brexit.

In a decision handed down on May 9, the court resolved a dispute over design rights between Belgian security technology companies Betafence and Zaun that had emerged before the UK’s departure from the EU.

After the Brexit transition period concluded on December 31 2020, ‘cloned’ design rights were automatically created for existing EU designs—becoming new UK rights.

Olivia Gray, Senior Associate, provides comment for World Intellectual Property Review on the significance of the judgment:

Arnold LJ’s judgment is a useful reminder of the parasitic nature of a UK re-registered design (UKRRD)(a UK design automatically created on “IP completion day” from an existing Community registration). While it is its own distinct legal right, with its own territorial scope, it remains inextricably linked to the EU registered design from which it was cloned and therefore is “in substance the same as the RCD”.  Although Arnold did draw the distinction between the continuing effect of EU law in relation to the RCD but the application of UK legislation in relation to the UKRRD.

"The case is also a useful reminder of the asymmetry between the findings of invalidity and findings of validity.  A finding of invalidity draws a hard line - the design is no more. Whereas a finding of validity is not necessarily the end of the matter; in the right circumstances, validity can be challenged again.  However, as held in this case, this will not be possible when to do so would be contrary to the common law principles of res judicata, abuse of process or issue estoppel.

Read the full piece in World Intellectual Property Review here (subscription required).