On 18 November 2024, the EU Design Legislative Reform Package was published. The Reform Package consists of a recast Directive and amended Regulation that aims to simplify and modernise EU design law, whilst also further harmonising Union law with national and regional design systems.
To provide a brief overview of EU law, Regulations are binding legislative acts that apply across the EU. Directives, however, are goals Member States must achieve, but they are allowed to devise their own laws to achieve these goals.
This Article aims to provide you a brief overview of the upcoming Reforms:
KEY CHANGES INTRODUCED BY THE REGULATION
- Terminology, Symbols and Definitions:
The Community Design will be renamed the EU Design. In addition to this, a new symbol has been introduced – Ⓓ. This symbol will allow the holder of a registered design to give notice of their design right.
The definitions of ‘design’ and ‘product’ will be broadened. The definition of ‘design’ will now include ‘the movement, transition or any other sort of animation’ of its features. The definition of ‘product’ will include ‘non-physical forms; including, the spatial arrangement of items intended to form an interior or exterior environment’. In short, the definitions of designs and products will be broadened to recognise the digitalisation and animation of designs.
- Rights against Reproduction and Counterfeiting:
The holder of an EU design will be afforded the right to prevent third parties from ‘creating, downloading, copying, sharing or distributing to others any medium or software which records the design’ for the purpose of reproduction, without their permission. The intention behind this term is to grant design right holders protection against third parties using new technologies, specifically 3D printing, to reproduce their designs.
In addition to extending design rights, new measures have been introduced to help combat counterfeiting within the EU. Design right holders will be granted the ability to prevent third parties from bringing infringing products into the European Union, irrespective of whether the products are intended to be released into the commercial market. To strike a fair balance, these measures will not apply where the third party can prove the right holder is not entitled to prohibit the products from entering the market in the country of final destination.
- The Visibility Clause:
Elements of a design that are not visible during use may now receive design protection, so long as all relevant features are shown in the design application.
There are exceptions to the visibility clause – design protection does not extend to component parts of a complex product that are not visible during normal use, nor those that are not visible when the part is mounted, nor those which in themselves do not fulfil the requirements of novelty and individual character.
- The Repair Clause and Spare Parts:
The Repair Clause, to put it simply, will prevent design rights being awarded to spare parts of a complex product for the sole purpose of repair. The purpose of this clause is to ensure fair competition in the spare parts market and prevent manufacturers from having product monopolies.
As expected, there are exceptions to the Repair Clause – a spare parts seller must inform customers of the commercial origin and manufacturer identity when selling spare parts. The details of commercial origin and manufacturer identity must be clear and visible on either the product, packaging or accompanying documents (the latter is to be used if the other options are not available).
To account for existing design rights, an eight-year transitional period has been granted to allow existing spare part designs on the register to expire.
- The Application Process and Fees:
The EUIPO have modified the design application process to make it more efficient and attractive. Firstly, applications for an EU design will now only be accepted at the EUIPO. Moreover, the number of images that can be submitted to represent a design will increase. The Reform Package will also abolish the ‘unity of class’ requirement, allowing for multi-class filings. Finally, a flat design application fee has been introduced for EU designs (i.e. a single application fee in place of the current registration fee and publication fee), and it has also been assured that national design applications will remain cheaper than EU applications.
- Permitted Acts in relation to Designs:
Reproduction of a design for the purpose of making citations or of teaching, referential use in the context of comparative advertising, use for the purpose of artistic expression, and use for the purpose of comment, critique or parody, insofar they are in accordance with fair and honest trade practices, shall be considered permitted acts and will not be considered infringement of a design right.
KEY CHANGES INTRODUCED BY THE DIRECTIVE:
- Non-Registerable Designs:
Member States may introduce new specific grounds for non-registrability and invalidity, on the basis that these grounds protect their cultural heritage. As introduced by the Directive, Member States will be able to deem a design non-registerable, or invalid, if it incorporates a specified symbol or element that is deemed to be of national interest, such as a particular monument.
- Prior Use:
Should a third-party establish prior use, pre-dating the filing date or priority date, of a registered design within a Member State, the third-party will be entitled to limited exploitation of their design.
- Deferment of Publication:
The Directive seeks to make the rules relating to deferment of publication uniform across all Member States. Applications for national designs will be able to request deferment of publication for a period of 30-months from the date of application.
- Invalidity Procedures:
In order to ensure legal certainty, all grounds for non-registrability and invalidation must be established within Member State laws. In addition to this, Member States will be able to provide administrative procedures for declaring design rights invalid, mirroring that available to EU designs.
- Unregistered Designs:
As a part of the efforts to simplify the Design system, the Reform Package has outlined that unregistered design rights cannot arise at Member State level. Protection for designs at a national level (including the Benelux States) will only be granted to those that are registered.
Both the Regulation and the Directive entered into force on 8 December 2024, with the Regulation being set to apply from 1 May 2025. The EU have granted Member States 36 months (until 9 December 2027) to transpose the Directive into their National Law.