As discussed in recent articles, the Retained EU Law Act came into force on 1 January 2024 and allows the UK courts to depart from earlier case law of the Court of Justice of the European Union moving forward. This may well have an appreciable effect on the law relating to designs and copyright in the UK.
Whilst registered design law in the UK and EU has been harmonised for over 20 years, there are a number of key differences in practice between UK and EU (Community) registered designs. Furthermore, over recent years the EU courts have developed a line of cases relating to copyright that potentially extends the range of works in which copyright may subsist beyond the so-called “closed list” of copyright works traditionally recognised by the UK courts. It will be interesting to see how the Retained EU Law Act affects both of these areas of design law and practice.
Registered Designs
Traditionally there have been a number of substantive differences between UK and EU registered design law and practice, including the differing periods for which publication of a design may be deferred (up to 12 months from the filing date of a UK application, compared to up to 30 months from the filing or priority date of an EU application). However, following Brexit, we have seen the UKIPO adopt a number of registered design examination guidelines that differ from the examination guidelines of the EUIPO, particularly in relation to design applications for animated graphical user interfaces (GUIs).
Under both UK and EU law, the legislation has been drafted in a sufficiently broad manner to allow for the registration of static and animated GUIs, and previously it was possible to secure protection for such designs in both the UK and EU without difficulty. However, in the UK, it is now common for the UKIPO to raise objection to animated GUIs if any frame of the animation sequence introduces new elements or features of the design that are not present in the other animation frames. The legal basis for such objections is somewhat unclear, and interestingly the EUIPO tends not to raise objections on this ground. In addition, a UK design application may also face objection if the animation sequence of the design claimed requires any user interaction; again, the EUIPO tends not to object to design applications on this ground.
The EU Commission is currently proposing to revise design law across the EU, with the most recent draft legislation having recently been approved by the European Parliament. These proposed changes appear to draw EU design law even further away from UK law and practice, not least in the field of GUIs given that the proposed new EU law expressly includes provisions intended to improve design protection for GUIs. It remains to be seen as to whether UK law will develop in a similar way moving forward, or if the Retained EU Law Act will result in the UK continuing to move away from the EU.
Unregistered Designs
The UK has also operated a slightly different system for the protection of unregistered design rights from the EU, having had its own national system of unregistered design law since 1989. Following the introduction of a harmonised EU unregistered design law system in the early 2000s, the UK found itself operating a dual system of unregistered design rights, namely its traditional UK system and the newer Community unregistered design right system. After Brexit, the Community unregistered design right system was then replaced in the UK by a further new system called “supplementary unregistered design right”. As such, the law relating to unregistered designs in the UK is currently overly complex and does not mirror the position in the EU, particularly given that the proposed new EU designs legislation seeks to harmonise the law relating to unregistered designs across the EU.
Since the Retained EU Law Act no longer requires the UK courts to interpret national legislation to give effect to EU law, it will be interesting to see how the UK courts now interpret supplementary unregistered design right law. It will also be interesting to see if the UK Government seeks to rationalise UK design law, both registered and unregistered, to simplify the protection available to designers.
Copyright
As mentioned above, the EU courts have recently decided a number of cases relating to the law of copyright, which essentially introduce a new test for determining whether copyright subsists in a particular work, namely whether the work is original in the sense of being an expression of the author’s own intellectual creation, and whether the work is identifiable with sufficient precision and clarity. Furthermore, the EU courts decided that EU member states were prohibited from imposing any further requirements for a work to enjoy copyright protection.
This test necessarily conflicts with the traditional UK test for the subsistence of copyright, which requires a work to be both original and to fall within one of the prescribed types of works set out in the Copyright, Designs & Patents Act 1988.
Recent decisions of the UK courts in relation to questions of whether copyright subsists in certain works have attempted to align the application of the UK Act with the EU case law, such as in the case of Response Clothing Limited v. Edinburgh Woollen Mill, in which the court found that a woven fabric constituted both a work of artistic craftsmanship as well as an expression of the author’s intellectual creation, thereby complying with both UK legislation and EU case law. However, it remains to be seen as to whether the UK courts will continue to follow this line of EU case law, or whether they will revert to the more traditional interpretation of copyright law and a strict application of the provisions of the 1988 Act, thereby narrowing the types of work in which copyright may subsist.
The future?
As set out above, there are a number of areas of design and copyright law that have been heavily influenced by EU law, and which may now be about to change following implementation of the Retained EU Law Act on 1 January 2024. The law relating to registered designs, unregistered design right and copyright may all start to diverge from EU law, making it even more important for IP rights owners to carefully consider their IP rights, the protection they require, and the mechanisms used to secure such protection. An appreciation of the differences between UK and EU law and practice in this field will be imperative to ensure that IP rights owners enjoy appropriate protection in both jurisdictions.
With attorneys in both the UK and EU, Marks & Clerk are ideally placed to advise on these issues moving forward and to provide clear, commercially focussed recommendations based on an in-depth understanding of the design and copyright laws in both jurisdictions.
