On 29 November 2022, the European Commission published its long-awaited proposals for a new Directive on the legal protection of designs (“Directive”) and a new Regulation on Community designs (“Regulation”). These proposals are the first real substantial review of EU design laws in over 20 years. It is largely the result of an ongoing evaluation phase. This included the European Commission’s in-depth Evaluation Report published in 2020.

The two proposals are currently being discussed before the European Parliament and Council. We’ll summarise the main aspects.

EU design law enters the digital world: new “design” and “product”

Article 2 Directive (Article 3 Regulation) suggest a new definition for “design” and “product” in order to future-proof design protection against technological advances and to provide greater legal certainty and transparency. Also 3D printing and new technologies like the metaverse are specifically addressed.

• Under the new definition, “design” may include movement, transition or any other sort of animation, in addition to lines, contours, colours, shape, texture, materials of the product itself and/or its decoration.
• The definition of “product” is broadened, and covers “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a digital form” and explicitly includes also graphical user interfaces. “Sets of articles” and interior environments (such as store interiors) are now also part of the product definition.

No general requirement of visibility

Currently, EU design law requires that component parts of complex products (e.g. a car engine) must remain visible during normal use to be separately eligible for protection.

EU law does not explicitly provide for such visibility requirement for non-complex products. This is now confirmed and clarified in Recital 10 (18) of the Regulation (Recital 17 Directive):

“While otherwise design features of a given product do not need to be visible at any particular time or in any particular situation of use in order to attract design protection, an exception should apply to the design protection of component parts of a complex product that need to remain visible during normal use of that product.”

Consequently, while protection is only granted for those design features which are shown visibly in the design application (Articles 15 Directive and 18a Regulation), the additional requirement that the design features must remain visible during normal use applies only to component parts of complex products.

Goods in transit

The draft provisions mirror the amendments made in the 2016 EU trademark package (Articles 16(3) Directive and 19(3) Regulation). They provide that design holders can challenge, in essence, counterfeit goods in transit, even if the goods are not intended to be placed on the EU market, in a Member State where the design is registered and where the goods are not released for free circulation. This is unless evidence is provided showing that the registered design right holder is not entitled to prohibit the placing of the products on the market in the country of final destination.

Consequently, EU design rights can also be enforced against goods that originate from, and are destined to, non-EU countries.

3D printing

The 2020 Evaluation Report revealed that it is unclear whether design rights provide sufficient protection against copying by means of 3D printing. The Commission proposed to limit the private use exception by adding a requirement of compatibility with fair trade practices and normal exploitation of a design.

However, the proposals go further and extend the list of exclusive rights of the design holder. They  introduce new exclusive rights, namely the right to prevent “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 the design is applied] to be made” (Articles 16 Directive and 19 Regulation).

The new right targets 3D model developers, end-users and intermediaries such as online service providers.

Repair Clause

The “repair clause” concerns the repair of complex products and the question to what extent right holders can prevent the use of a (necessary) spare part based on their design rights. This is a controversial issue and has been for many years. Until now Member States could only agree on not making changes to national law unless they liberalised the market for repair parts (the so-called “freeze plus”, Article 14 current Directive).

Community Designs (to be called “EU Designs” under the proposal), however, are already subject to a provisional “repair clause” (Article 110a of the current Regulation).The CJEU had ruled in Acacia (Case C-397/16) that parties dealing in spare parts can only rely on the repair clause if they had complied with a “duty of diligence” requiring them:

1. To clearly and visibly inform downstream users that the component part incorporates third party design and is for the purpose of repair of the complex product to restore its original appearance only:
2. To ensure that users comply with the repair clause, for example, by contractual means; and
3. Not to sell parts to users reasonably known not to comply with the repair clause.

The CJEU did not limit the scope of this provision to those “must match” component parts whose appearance is dependent on the appearance of the complex product.

The repair clause now proposed by the Commission in both the Directive and the Regulation deviates from Acacia. This is quite surprising, as the Commission states that it made its proposals in view of this very case law.

• For one, its scope is explicitly narrowed down to cover only “must match” components.
• Secondly, the proposal does not state if the second and third limb of the due diligence conditions set out in Acacia will need to be observed still  to invoke the repair clause. This will create some uncertainty indeed. 

Registration

The 2020 Evaluation noted the inability to register dynamic design views, and also called for other means of representation, including 3D digital representations and video files. This is now included in the Directive, which provides in Article 26 that:

 “The representation of the design (…) shall consist in any form of visual reproduction of the design either in black and white or in colour. The reproduction can be static, dynamic or animated and shall be effected by any appropriate means, using generally available technology, including drawings, photographs, videos, or computer imaging/modelling”.  

Further, under the proposed Regulation, applicants would be able to combine several designs in a multiple application without being limited to products of the same Locarno class. By abolishing this ‘unity of class’ requirement, it will be possible to benefit from a bulk discount in more instances.

Relationship towards other forms of IP protection

The proposed Directive (and Regulation) oblige Member States to provide that a design is to be declared invalid if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State. Also if a distinctive sign is used in a subsequent design, and EU law or the law of the Member State governing that sign confers the right to prohibit such use (Articles 14 Directive and 25 Regulation).

Outlook

Designers will appreciate proposals bringing design EU legislation in line with new technologies, digitalisation and other IP right legislation. In addition, the EU legislator continues to search for the right balance in terms of the repair clause. Apart from that, the proposed changes appear rather modest. Noteworthy also are some of the issues the Commission did not address in its proposals:

• Priority: Article 41 current Regulation provides that applicants enjoy a 6-month priority right for the purpose of filing a registered EU design. However, in Kaikai (Case C-382/21) the EU General Court found that despite this wording of the Regulation, the design applicant’s priority period may be as long as 12 months if the priority right is based on an earlier patent application. It would be helpful if the proposals had set out more clearly the position.
• Product speciality: the CJEU in Group Nivelles (Case C-419/22) decided that designs can be revoked for reason of being anticipated by any identical design, irrespective of the product which it is intended to be incorporated in or applied to. The CJEU thereby seems to have suppressed the so-called “product speciality principle”, and has been questioned for it. However, the Commission proposals do not entertain the demands for legislative intervention in this respect. 
• 7-view-limit: Registered EU design applications comprise a graphic or photographic representation of the design. Currently the representation may contain no more than seven different views of the design, contrary to what is the case in many other design systems. Such a limit could frustrate effective design protection in the EU,  particularly given the difficulty in properly registering complex, dynamic or designs with moving parts.

Next steps

The two proposals are currently being discussed before the European Parliament and Council.

The Commission has invited public feedback on both proposals via its Have Your Say platform. The original deadline was 23 January 2023, but has recently been extended to 31 January 2023. See its webpages dedicated to the Regulation and Directive.

Stay tuned for developments!

Update 17/7/2023: A longer version of this article was published in E.I.P.R. 2023, 45(8)