Law still unclear whether a design must be first disclosed in the EU for protection as an unregistered design to arise in the EU despite changes to the Regulation. Those in the fashion and other affected sectors should continue to assume that first disclosure in the EU is required and take mitigating measures.
What's the issue?
Unregistered EU Designs (UEUDs)* are a valuable tool for many industries - protection arises automatically on disclosure of the design, is free and is EU-wide. Being relatively short-lived (3 years in duration), they are particularly beneficial to industries where trends move quickly, including the fashion and home décor industries. Where valid, the right prevents third parties copying the design including by creating designs which are identical to - or which form the same overall impression as – the design.
For some years, it has been unclear whether UEUDs arise if the design is first disclosed outside of the EU. The risk is that (a) a design is first disclosed outside of the EU, (b) that does not lead to UEUD protection, (c) the design cannot subsequently be protected as a UEUD as the first disclosure (outside of the EU) has destroyed the novelty of the UEUD.
To further muddy the waters, there is also uncertainty about whether the equivalent form of design available in the UK – the "supplementary unregistered design" (SUD) – is also protectable if first disclosure occurs outside of the UK. The reasoning is comparable.
If disclosure in the relevant territory is required for both UEUD and SUD, then it follows that the same design cannot benefit from both UEUD and SUD unless there is simultaneous disclosure in the EU and UK and even then that might not count.
Why the confusion about first disclosure?
The Design Regulation provides that UEUD arises when a design is first "made available to the public" within the EU. This occurs where the design is disclosed in such a way that, in the normal course of business, "it could reasonably have become known to the circles specialised in the sector concerned, operating within the EU".
It was always thought that a disclosure made outside of the EU could meet this criterion – for example, the design of a fashion item disclosed during New York Fashion Week would still gain UEUD protection as it would obviously become known to those specialising in the fashion sector in the EU. In fact, it was thought that all but the most obscure disclosures would be deemed to have come to the attention of the relevant circles in the trade (especially with the internet and globalisation).
However, the Design Regulation was amended in 2004 to address issues arising from enlargement of the EU. Buried among the amendments was a new Article 110a(5) which provided that “a design which has not been made public within the territory of the Community shall not enjoy protection as" a UEUD. No information was supplied as to the purpose of the change.
Some commentators considered that the change imposed a requirement for first disclosure of a design to occur in the EU for UEUD to arise. Others considered that such a significant amendment would not have been introduced in this way and that it would go against the spirit of the legislation.
What have the courts said?
There has not yet been an ECJ ruling on the issue. However, in two German cases - Thane International Groups Application (March 2004) and Gebackpresse II (Oct 2008 German Federal SC) - the courts interpreted Article 110(a)(5) to mean that only designs first disclosed in the EU could benefit from UEUD protection.
What was the impact of Brexit?
After Brexit, the interpretation of Article 110a(5) became even more important. The UK was no longer part of the EU and so first disclosure of a design in the UK might not be sufficient for UEUD to arise. Indeed, the EUIPO made comments on its website that a first disclosure of a design in the UK would not give rise to UEUD protection. Expanding the previous example, this would mean that the design of a fashion item disclosed at London Fashion Week would not benefit from UEUD protection significantly limiting designers' rights.
The UKIPO made similar comments about the equivalent form of UK protection (SUD) despite the UK legislation not containing an equivalent of Article 110a(5).
What's the update?
Article 110a(5) has been deleted from the revised Design Regulation (with effect from 1 May 2025) more here. Again, no reasoning was given by the EU Commission for this deletion.
Some commentators believe that this means that a disclosure anywhere in the world is sufficient for UEUD to arise as long as the disclosure could, in the normal course of business, reasonably become known to the circles specialised in the sector concerned in the EU/UK.
In our view, while the deletion of Article 110a(5) is a positive step by the EU, only a decision of the ECJ will ultimately decide this issue. The law (in both the EU and UK) still provides that only disclosures that could, in the normal course of business, reasonably become known to the circles specialised in the sector concerned in the EU/UK (as appropriate) are protected. There is still scope for that to be interpreted to mean that the disclosure itself has to be in the EU or UK (as appropriate), however unfair that might seem to designers.
What does this mean for designers and design owners?
- Continue to ensure (where possible) that first disclosure occurs in the relevant/key territory where unregistered protection is required.
- If protection in both the EU and UK is required, try to effect simultaneous disclosure in both territories, preferably online. Bear in mind that there is currently no case law to understand whether simultaneous disclosure would be sufficient for protection to arise.
- Consider relying on registered design protection in the UK or EU for key designs instead of placing reliance on unregistered design protection. To do this, applications must be filed within one year of the design first being disclosing. Note that, from 1 May 2025, it is possible to apply for a greater number of designs in a single design application substantially reducing the (already low) cost of protecting designs by registration.
- Consider whether there is scope to rely on UK unregistered design right (a second type of unregistered design, unique to the UK) as opposed to SUD in the UK. It protects the shape and configuration (but not surface decoration) of certain products. Businesses formed/with significant places of business or individuals habitually resident in qualifying countries can benefit from design right and – if the design is then disclosed in the EU – UEUD can also arise.
*Unregistered EU Designs (UEUDs) are/were – until 1 May 2025 – known as Unregistered Community Designs (UCDs)
