Suds

Suds on the New River between the USA and Mexico
Author Calexico New River Community Licence Copyright waived
 













The letters "SUD" stand for supplementary unregistered design. It is a new intellectual property right which came into being at 23:00 on 31 Dec 2020 in accordance with art 57 of the agreement for the United Kingdom's withdrawal from the European Union ("the withdrawal agreement"). 

Introduction
SUD replaces unregistered Community designs which ceased to apply to the UK at the end of the implementation period on 31 Dec 2020.  Art 57 provides:

"The holder of a right in relation to an unregistered Community design which arose before the end of the transition period in accordance with Regulation (EC) No 6/2002 shall in relation to that unregistered Community design ipso iure become the holder of an enforceable intellectual property right in the United Kingdom, under the law of the United Kingdom, that affords the same level of protection as that provided for in Regulation (EC) No 6/2002. The term of protection of that right under the law of the United Kingdom shall be at least equal to the remaining period of protection of the corresponding unregistered Community design under Article 11 (1) of that Regulation."

As I said in How Brexit has changed IP Law on 17 Jan 2021 in NIPC Brexit, the UK has implemented that article by continuing to enforce existing unregistered Community designs as "continuing unregistered Community designs" and to protect qualifying designs that have been made available to the public since 23:00 on 31 Dec 2020 (or which will henceforth be made available to the public) as "SUDs".

Applicable Law
The law that provides for SUDs is the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs) as amended by reg 3 and Part 1 of Sched. 1 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 638) and Part 5 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050). Although EU law ceased to apply to the UK at 23:00 on 31 Dec 2020 in accordance with art 126 of the withdrawal agreement, s.3 (1) of the European Union (Withdrawal) Act 2018 as amended by s.25 (2) (a) of the European Union (Withdrawal Agreement) Act 2020 incorporated the Community Design Regulation into the laws of England and Wales, Scotland and Northern Ireland.  The statutory instruments that amend the Community Design Regulation were made under s.8 (1) of the European Union (Withdrawal) Act 2018 which enables Ministers to prevent, remedy or mitigate—
(a) any failure of retained EU law to operate effectively, or
(b) any other deficiency in retained EU law,
arising from the withdrawal of the United Kingdom from the EU.  The effect of those amendments is to remove references to registered Community designs and substitute references to the UK or UK institutions for references to the EU and EU institutions.

Conditions for Subsistence
A new art 1 (1) of the Regulation provides that a design which complies with the conditions contained in this Regulation is referred to as a “supplementary unregistered design”.  According to art 4 (1) as amended, those conditions are novelty and individual character which are the same as for a right in a registered design under s.1B (1) of the Registered Designs Act 1949. Art 11 (1) of the Regulation as amended requires the design to have been made available to the public in the UK or qualifying country or territory.  "Making available to the public" means publication, exhibition, use in trade or other disclosure.

Rights Conferred by a SUD
A SUD confers on its holder the exclusive right to use it and to prevent any third party not having his consent from using it if the contested use results from copying (art 19 (1) and (2) of the Community design regulation as amended). Such use covers, in particular, making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.  A contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder."

Term
The term of protection subsists for 3 years from the date on which the design was first made available to the public (art 11 (1) as amended).

Purpose
The reason for introducing an unregistered Community design is that some sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance (see para 16 of the recitals to the Regulation). Para 25 added: "Those sectors of industry producing large numbers of possibly short-lived designs over short periods of time of which only some may be eventually commercialised will find advantage in the unregistered Community design." Those sectors would include the fashion, toy and novelty industries 

Unregistered Design Right
Another form of unregistered design protection has been available in the UK pursuant to Part III of the Copyright Designs and Patents Act 1988 ("CDPA") since 1 Aug 1989 called "unregistered design right" ("UDR").  As UDR lasts for 10 years (or 15 years if articles made to the design are never made available for sale or hire) and UDR can subsist in designs that are not necessarily new and without individual character it is worth considering whether there is any point in asserting SUD. 

The answer is that UDR and SUD protect different intellectual assets.  UDR protects the shape or configuration (whether internal or external) of the whole or part of an article (s.213 (2) of the CDPA).  SUD protects "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation". The upshot is that SUD protects aspects of a design which are not protected by UDR and vice versa.  For instance, SUD can protect surface decoration which is excluded from UDR by s.213 (3) (c) of the CDPA.  On the other hand, parts of an article that are hidden from human view in normal use may be protected by UDR, There is, of course, considerable overlap between the two design rights but it may be said that URD tends to protect functional designs whereas SUD protects ornamental ones.

Further Information
Anyone wishing to discuss this topic further may call me on 020 7404 5252 during office hours or send me a message through my enquiry form.

Comments

Peter Groves said…
I had thought that one tiny benefit of Brexit would be that we could drop this absurd and nearly-useless form of intellectual property. Yes, it protects some aspects of a design that design right doesn't. but copyright is a pretty effective form of protection for surface decoration and one has to ask whether the additional scope serves any useful purpose. The fact that designs have to be novel and to have individual character means very few designs will ever benefit from a SUD anyway. CUDR was, to my mind, just another for large rights owners to threaten (but not to the point of being actionable) smaller competitors: my one experience of CUDR was when my client was threatened by a household name fashion house over a retro design that dated back to the sixties. I tried hard to persuade the client to sue for groundless threats (the solicitors who fired off the threat without doing any homework deserved it too) but like most small businesses they were all for a quiet life, and settled for having my bill paid for them. My inclination since then has been to disregard any threat based on CUDR (and now SUD), asking "is that really the best you've got?". The point was made when s.52 was repealed that design protection is a finely balanced system and interfering with one part of it is likely to upset the equlibrium, but the government does not deal in nuance.

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