Part 1 of 4: Spotlight on Enforcement

Finally, the new EU design package consisting of the new Union Design Regulation 2024/2822 and the new Design Directive 2024/2823 have now been published in the Official Journal. We already informed about some of the highlights last week. Over the next few weeks, our product design team here at Bird&Bird will be reporting in a series of articles on the key changes. 

In general, the reform results in a number of new protection options for design applications. This also results in an improvement in the enforcement of protection for innovative products. In line with this, the main provision on injunctive relief has been extended to cover also “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product protected by a design to be made”. This is an aspect that extends the protection of designs far into the digital world - a general overarching theme of the reform - and thus covers 3D printing, among other things. This topic is so relevant that we will go into it in more detail in a later part of this series

Today’s overview will focus on three changes in terms of enforcement: repair clause, regulation of goods in transit and administrative invalidity proceedings.

Spare a minute for me? – the new repair clause

Article 20a Design Regulation and Art. 19 Design Directive, respectively, include the new so called “repair clause”. These new provisions are far more comprehensive than Art. 110 of the previous Community Design Regulation and deal with the spare parts market and accessories business in particular. The result is a differentiated regulation:

• On the one hand, the EU legislator wants to strengthen the spare parts market and to ensure consumers have access to affordable and sustainable repair options. Therefore, spare parts do not infringe protected designs if they are used for the purpose of repairing a complex product to restore it to its original appearance. This restricts the rights arising from the design and reduces the original manufacturer's scope for protection.
• On the other hand, the rights of the owners were not lost sight of. Therefore, the limitation expressly applies only to identical spare parts that serve the purpose of restoring the original condition. Tuning parts or accessories that are compatible with the complex original product are therefore not covered by the exception. So if a spare part is compatible, not identical, but still quite similar to the original part, the original manufacturer can take action against it. In addition, aftermarket suppliers are free to protect their accessories and tuning parts with designs and take action against imitations, as long as their designs do not infringe the original manufacturer’s rights.
• To invoke the exception, the manufacturers/sellers of the spare parts must ‘duly inform’ consumers that they are not original parts and about their origin. However, they are not required to guarantee that the end users use the spare part for no other purpose than restoring to an identical condition.
• For national designs, this only has to be implemented by 9 December 2032. For EU designs, however, this enters into force with the rest of the Regulation on 1 May 2025.

Clearly, this entire regulation is aimed at the automotive market in particular. However, examples outside the automotive market are also conceivable, such as ‘Rolex tuning’.

Overall, the harmonisation is to be welcomed. At the same time, this does not mean that we will not see any more cases involving spare parts in the future. Details are still unclear, especially regarding the collision with trade mark rights. In the past, it was considered trade mark infringement if spare parts, even if they did not bear the protected trade mark at all, merely provided a holder for the original trade mark to be inserted separately. That seems to undermine the rationale of this new provision from design law - but it is possible that the trade mark courts will still accept this.

Just passing through: goods in transit

The EU is all about the common market. However, sometimes goods merely pass through the entire EU or through the territory of a Member State in transit. Unlike trade mark law, EU design law didn’t have a specific ruleset defining the rights of design holders regarding such goods in transit yet.

The EU Design Package brings harmonisation with what already applies in trade mark law. Article 19 (3) Design Regulation states that any import of counterfeits into the internal market is inadmissible. For national designs, Article 16 (3) Design Directive states the same for the import into the Member State concerned. This means infringement proceedings in the country of transit and border seizures are possible “where the design is identically incorporated” or “cannot be distinguished in its essential aspects” from the original.

However, these rights lapse if it can be proven that the design holder “is not entitled to prohibit the placing of the products on the market in the country of final destination”. Consequently, if the design is not protected in the final country of destination, there is no infringement in transit. 

To a certain extent, the rule on transit is therefore a kind of place of jurisdiction: if there is a risk of infringement in the country of destination, action can be taken beforehand when the goods cross the border into the country of transit. If no such claim exists in the country of destination, it is still possible to stop the transit - but the declarant/holder of the products can get the goods released again by arguing that no claim exists in the country of destination.

Torpedoes away: Administrative invalidity proceedings

Designs have always been an untested right, meaning they are registered without the requirements of novelty and individual character being checked in advance. Nevertheless, validity is presumed in infringement proceedings or border seizures (Art. 85 Design Regulation / Art. 17 Design Directive). If the validity of a design is questionable, alleged infringers can only defend themselves in ongoing proceedings by bringing a counterclaim for a declaration of invalidity. Further, if an infringement action is imminent, alleged infringers can consider initiating invalidity proceedings. If such proceedings are filed before a corresponding infringement action, they can bring the infringement proceedings to a standstill (Art. 91 Design Regulation). This is known as a “torpedo action”.

Such invalidity proceedings can brought before a court. For Community and EU designs, there has always been and will continue to be the possibility of invalidity proceedings before the EUIPO. Now, in addition, the Design Directive encourages the introduction of such administrative proceedings for national designs before the respective national IP offices, if they do not already exist (Art. 31 Design Directive). Since administrative proceedings are generally easier to introduce and cheaper than court proceedings, this is a great advantage for alleged infringers. 

However, introducing these proceedings is unfortunately not mandatory for member states. Consequently, harmonisation falls short of what applies in trade mark law, where corresponding administrative invalidity proceedings were made mandatory with the last reform in 2019.

Look out for our next article in this series  which will focus on the  filing and prosecution of designs, and the new and extended definitions and terminology.