On November 29, 2022, the European Commission made a move that could change the game in design rights protection. The Commission adopted its design reform proposal including the Proposal of Directive on the legal protection of designs (“Directive”) and the Proposal of Regulation on Community designs (“Regulation”). The goal? To make safeguarding industrial designs across the European Union more affordable, faster, and predictable and to address the challenges of 3D printing and the digital transformation.

We previously reported on the proposals which constitute the first substantial review of EU design laws in over 20 years, you can see this article here.

On the 25 September 2023, the European Council took a stance on the proposals, bringing about amendments relating to fee levels, the requirements for representation of a design and the approach to national administrative invalidity proceedings. While the majority of changes proposed by the Commission were supported by the Council, it’s noteworthy that the Council introduced some significant amendments of its own:

• It agrees that the definitions of “design” and “product” need to be updated to the needs of the digital age. However, instead of extending the definition of “product” to “digital” form as suggested by the Commission the Council opts for including “non-physical” forms to the definition and clarifies that not only spatial arrangement of items intended to form, in particular, an interior, but also an exterior environment should be able to be a product.
• The Council also proposes changes to the requirements for representation of a design and advocates that an application for a registered EU design should contain a sufficiently clear representation of the design permitting the subject matter for which protection is sought to be determined. Subject to the Commission’s proposals the representation had to be suitable for reproduction, permitting all the details of the subject matter for which protection is sought, to be clearly distinguished and permitting publication. Consequently, if, at the date of the filing request some documents are missing, the design can still be registered provided that the representation of the design is clear enough.
• Designers should also be given more flexibility in relation to the deferment of the publication of their design. Instead of a fixed deferment period of 30 months, designers should now be able to defer the time of publication of a design up to a maximum of 30 months, i.e. they can also chose shorter time periods. Rights holders shall in future also be allowed to stop the deferment at their request any time prior to the end of the deferment period. Currently, this is only possible at the end of the deferment period.
• The Council also introduces a clarification to the Directive regarding the declaration of invalidity of a registered design right. The Member States should be allowed to provide for an administrative procedure of appeal before their national Intellectual Property Offices, so that these proceedings do not need to be handled by the courts.
• It’s also worth noting that some amendments regarding the fee regime were made to ensure that the fees for national design protection (e.g. filing, renewal) continue to be cheaper than the design protection on EU level. It remains to be seen, whether the proposed increase in fees might not eventually discourage further filings and renewals of design rights, which would be somehow contradictory with the overall goal of the design reform to foster design protection.

By adopting the above positions the Council formalises its negotiating stance, but also grants itself a mandate for discussions with the EU Parliament, which currently is still debating the Commission’s proposal. As soon as the EU Parliament has also adopted its position the negotiations will commence.

As to the EU parliament’s debate on the design reform proposals, it is noteworthy that some of the MEP suggest important amendments with regard to the scope of the proposed repair clause. While the Commission’s proposal deviates from the principles discussed by the CJEU in the Acacia case and wants to limit the scope of the repair clause to “must match”-parts only, there is some sympathy amongst members of the EU parliament to not confine the scope of the repair clause to “must match” parts only, but to apply the repair clause in line with the Acacia ruling of the CJEU in much broader way.

The reform process is expected to proceed to trialogue stage around January 2024 and the new law is anticipated to be adopted and to enter into force in the first half of 2024. Of course we’ll keep you well-informed along the way!