For over two decades, the European Union's design regulations as set out in Council Regulation (EC) No 6/2002 have remained largely unaltered, yet technological advancements and the digital age have dramatically transformed the design industry. In this ever-evolving landscape, the European Commission have recognised the need to adapt its regulatory framework to the challenges and opportunities presented by the 21st century. The European Commission has therefore embarked on a comprehensive effort to update, simplify and harmonise the law governing design protection within the EU.
The proposed changes are set out in two "proposals", unveiled by the European Commission in November 2022. The first is 2022/0391 (COD) – a "Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002". The second is 2022/0392 (COD) – a "Proposal for a Directive of the European Parliament and of the Council on the legal protection of designs (recast)". Together these shift the way design law is conceptualised, enforced and protected throughout the member states of the EU. The proposed changes address a wide spectrum of issues, ranging from the amendment of key terminologies and the expansion of the definition of "design" to the enhancement of protection measures, while continuing to promote fair competition.
This overview identifies certain key proposed changes to the EU design regulations, and provides a brief commentary on their potential significance and implications. From terminological shifts reflecting the evolving nature of designs both in the EU and across the world, to the embrace of technological innovations, the proposed changes provide expanded definitions and protection measures, and they intend to pave the way for a more dynamic and adaptable design ecosystem within the EU, with the intention of leading the way for the global IP community.
In particular, it is evident that the changes intend to reduce the administrative burden and compliance costs for businesses and individual designers using the future "European design" system and for the EUIPO too.
According to the EUIPO, the two proposals are currently in their last round of adoption by the European Parliament and the Council under the ordinary legislative procedure. When the new proposals are adopted, the new rules of the Directive will be transposed into the national law within two years. Regarding the European Design Regulation, part of the changes will become effective within four months after its entry into force (which would mean around February 2025), with the remaining provisions coming into force when the delegated and implementing acts are enacted (18 months after entry into force, thus around April 2026).
Overview of the main changes
Terminology and Definitions
First of all, Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) will respectively be renamed Registered European Designs (REUDs) and Unregistered European Designs (UEUDs). This renaming reflects the demise of the term "European Community" and is consistent with other revisions, such as the transition from Community Trade Marks (CTMs) to EU Trade Marks (EUTMs).
The proposed modernisation also seeks to increase legal certainty and redefine what may be protected as a design. The aim is to make the legislation future-proof and adaptable to technological advancements. The definition of a design would now more clearly encompass features such as movement, transition and animation, while still applying to the appearance of either the entire product or a part of it. This expanded definition would apply to both REUDs and UEUDs.
The definition of a product is also being expanded to cover a broader range of items. This will still include industrial or handicraft items, but will also extend to non-physical objects such as those that are materialised in a digital form. The proposals provide a non-exhaustive list of items that would qualify as "products" such as packaging, sets of articles, get-up, the spatial arrangement of items intended to form an interior environment, parts intended to be assembled into a complex product, but also 2D graphic works or symbols, logos, surface patterns, typographic typefaces and GUIs.
By specifying that products need not be embodied in a physical object, the new regulations look ahead to future design protection, allowing the protection of designs in digital form, designs subsisting only in the metaverse, virtual products authenticated by non-fungible tokens ("NFTs"), graphical user interfaces ("GUIs"), and 3D CAD files necessary to print 3D models.
Scope and Limitations
With the expanded definitions of design and product, the new regulations refer only to the "clarity" of the representation for a design application to receive a filing date. The scope of protection will be defined by reference to visible features of appearance as shown in the application for registration. While this may help in establishing clear parameters for what can be protected under design law, it is likely that the notion of "clarity" of the representation will be the subject of judicial consideration in the future.
The scope of protection for registered EU designs is also being expanded to include protection for activities such as 3D printing, as a result of the REUD holder's exclusive rights being extended to cover the prevention of "creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product [in which the design is incorporated or to which it is applied] to be made." This strengthens the rights of REUD holders and aligns with the growing use of additive manufacturing techniques across a wide range of sectors.
Furthermore, a registered EU design will also be protected against counterfeit products which, whilst not released for free circulation in the EU, nevertheless transit the European Union, provided that the design is "identically incorporated in or applied to" the goods concerned, or where the design "cannot be distinguished in its essential aspects" from these goods.
The list of permissible uses of a design has been extended to cover use for the purpose of comment, critique and parody, provided that such use complies with fair trade practices and do not unduly prejudice the normal exploitation of the design. These additional uses recognise the evolving landscape of design-related applications, particularly in the digital realm.
Importantly, as a restriction to the REUD holder's scope of protection, the existing transitional repair clause becomes a permanent provision, aiming to foster competition in the spare parts market by denying design protection for component parts of complex products where the design of the component part is dependent on the appearance of the complex product, and where the component part is used for the sole purpose of the repair of the complex product so as to restore its original appearance. Accordingly, it will no longer be possible for design owners to use EU designs to claim a monopoly in the appearance of spare parts where those spare parts are used to restore the appearance of the original product. However, in order to benefit from this restriction, the manufacturer or seller of the spare part must clearly inform the consumer of the origin of the spare part, so that the consumer may make an informed choice between competing products that can be used for the repair.
The rarely used option to file a specimen for representing the design is being abolished. Instead, there will be an update to the standards of design representation so as to make them fit for the digital age. The Commission intends to specify the standards for design representation required in applications for REUDs in the Implementing Regulation in due course. This contrasts with the Directive seeking to consolidate national design law across the EU, in which there is a provision allowing Member States to accept design applications in which the design is represented in "any form of visual reproduction", including "static, dynamic or animated" reproductions and "effected by any appropriate means, using generally available technology, including drawings photographs, videos or computer imaging/modelling". As such, it may well be possible to file national design applications in the EU using video files depicting an animated sequence, rather than being forced to file individual frames of that animation as is currently the case. In turn, it is hoped that the REED Implementing Regulation will mirror the national requirements of the Member States in due course, once practice in this regard has converged across the EU.
On the other hand, the use of such means for representing a design may well introduce further difficulties and complexities for design holders, such as how elements of the design are to be disclaimed within such an animated file.
It is also interesting to note that multiple REUD applications will be able to cover products that fall under different Locarno Classes, albeit subject to a maximum of 50 designs within a multiple design application. This should provide greater flexibility for applicants, and will allow for bulk filings at discounted rates, much like the existing UK system.
Miscellaneous
A new registered design symbol (D) is also being introduced, allowing rights holders to indicate that their design is registered. This may be done by displaying the letter "D" enclosed within a circle on any products incorporating or featuring the registered design. This proposal should provide greater awareness of the design registration, and more immediate warnings to potential infringers, thus improving the deterrent effect of registration for the design right holders.
National Design Rights
Alongside the proposed changes to registered EU designs, the Commission also proposes to introduce a Directive seeking to update national registered design law with changes similar to those proposed to REUDs. In addition to these changes, the Directive also aims to eliminate the discretion that currently allows Member States to provide unregistered design protection at the national level. Instead, any design protection offered by Member States at the national level would be limited to registered protection only. As there is existing protection for unregistered designs at the EU level, this change seeks to ensure consistency across the EU, and thus will minimise the potential for divergence in case law. Noting that the UK offers a longer duration of unregistered design protection than the EU, this could offer advantages to UK businesses.
Furthermore, Member States will be required to establish administrative invalidity proceedings for registered designs, rather than only allowing a registered design to be contested in court proceedings, the latter being cumbersome and expensive. This approach follows a similar change introduced for trade marks and aims to streamline the process across Member States to provide an efficient and expeditious alternative to court proceedings.
The European Directive will also provide for a national "repair clause" allowing the secondary market to offer "must match" spare parts, albeit with a transitional period of 10 years. This long transitional period should allow existing design right holders, such as vehicle manufacturers, to adjust their market conduct with minimum risk or disruption to investment and innovation.
As highlighted above, the European Commission is aiming to create an adaptable, accessible and robust legal framework for designs in the EU, and one that caters for the demands of the digital age and the still-evolving design practices of the 21st Century. It will be interesting to see how businesses will take advantage of these changes, and how any potential uncertainties in the new legislation will be interpreted by the courts as disputes arise in the future.
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