26 SEPTEMBER 2016 LEGAL EYE WWW.RAGTRADER.COM.AU PRESENTED BY Brexit blowout K&L Gates details what Brexit means for Australian brands protecting their IP.

S THE SHOCK waves caused by a Brit- can consider establishing subsidiaries in a nounce a conversion process which will ish vote to leave the European Union qualifying country, or have designers work facilitate recognition of existing rights at A(EU) begin to subside, it is evident out of qualifying countries so that they are UK national level. that Brexit will have far reaching ramifi- “habitual residents”. If this qualification Companies and designers who are fil- cations for anyone interacting with intel- status can be achieved, then the UKUDR ing new designs or marks in the coming lectual property (IP) rights in the UK and will provide some comfort to designers. months should consider applying to regis- Europe, particularly those in the fashion While the UKUDR does not protect ter a UK design/mark and EU registered and retail sectors. 2D works (such as fabric prints), there is design/mark concurrently in order to avoid While it will be some time before the copyright protection which will go some an uncertain conversion process. Using the consequences of Brexit will be known way to bridging the gap left between current EU conversion process is not rec- from an IP perspective, designers should EUUDR and the UKUDR. Copyright ommended until greater clarity about the be thinking proactively about how to best arises under national law, so will not be implications of Brexit is available, as this protect themselves if the UK remains an directly affected by Brexit. Australian na- route only permits complete conversion of important market. tionals can enjoy the same level of copy- a EUTM into individual national rights Below we highlight some key issues brand right protection in the UK as UK nation- and does not allow a proprietor to retain owners and designers should consider. als due to reciprocal rights in international any element of the EUTM. agreements governing copyright. Brexit clearly raises a number of impor- Unregistered Designs & Copyright Further, following recent changes to tant considerations for the fashion indus- Unlike Australia which has no protection copyright law in the UK, designers of mass try. While many elements of what a Brexit for unregistered designs, fashion designers produced artistic works (where more than may look like are yet to be determined, de- can currently utilise the EU-wide system of 50 items have been made) will enjoy a sig- signers and fashion houses for whom the unregistered design protection (EUUDR) nificantly longer period of protection for UK is an important market should consid- to protect the appearance of a design (2D their copyright works (life of the designer er taking steps to review and bolster their and 3D features) for three years from the plus 70 years, instead of just 25 years). This IP protection in the short term. ■ date the design was first made available to is good news for fashion designers who the public in the EU. deal in commercial quantities. Following a formal Brexit, however, As ever, reliance on unregistered rights Submitted by K&L Gates partner Arthur Artinian the EUUDR will no longer have effect alone is likely to create risks for designers. and associate Briony Pollard. For more in the UK. Registration of designs in the UK is avail- information about design and trade mark Nevertheless, protection for unregis- able and should be considered for particu- registration and en-forcement, please contact tered designs will continue to be available larly important designs. Arthur Artinian ([email protected]). This under the UK unregistered design right article is for informational purposes and does not system (UKUDR). EU Registered Trade Marks & Designs contain or convey legal advice. The information The UKUDR is more generous in time Once the UK leaves the EU, regis- herein should not be used or relied upon in regard scale than its EU counterpart and lasts tered IP rights such as EU trade marks to any particular facts or circumstances without the earlier of: (EUTM) and designs may cease to have first consulting a lawyer. 15 years from the end of the calendar effect in the UK. The UK Government is year when the design was first recorded in expected to an- a design document or from when an article was first made to the design plus 10 years from the end of the calendar year when ar- ticles made to the design were first made available for sale or hire. However, the UKUDR only protects designs created by a resident of a “quali- fying country”, the list of which is very narrow and crucially does not include Australia. To overcome this re- quirement, Aus- tralian designers