Welcome back to our series of articles on the new EU design package. Part 1 on Enforcement can be found here; please see here for Part 2 on the perennial love-hate relationship between design law and copyright law. Today, we take a look at the novelties for Filing and Examination, or more specifically: What will change for design applicants? What innovations do you have to be prepared for or can you look forward to? 

At its core, it is about simplifying and modernising. This principle originating in product design itself (referring to Dieter Rams’ “good design is as little design as possible”) could be adopted as the unofficial motto of the reform. This seems to be the reasoning behind numerous legislative amendments and administrative guidelines that underpin the new European system for obtaining design rights.

Simplify

Multiple applications streamlined

• One of the most radical changes is the elimination of the “unity of class” requirement for multiple applications. 
• Under the old (and still current) legislation, all designs within a multiple application had to be classified under the same “Locarno” class. (The Locarno Classification is an international classification of products for protected designs, categorising over 6,600 different products into 32 main classes and various subclasses.) When applying for a design, applicants must indicate for which products and in which class the design is to be registered. Under the old rule, all designs in a multiple application had to essentially relate to the same type of product. 
• Under the new legislation, different designs within the same multiple application can now be classified independently. This change makes the filing of multiple applications simpler and, at least for the registered EU designs, even cheaper. 
• This does not mean that the indication of the products will affect the design’s scope of protection. This will also apply to descriptions, and to any verbal disclaimers that explain the representation of the design.

EUIPO’s role

• The EUIPO will effectively become the “one stop shop” for registered EU designs.
• Previously/currently, EU design applications could be filed also with the national IP office, which would then forward the application to the EUIPO. This will now end, as there is no benefit in doing so.
• Centralised filing is good news for applicants and IP practitioners as the EUIPO is arguably one of the most user-friendly IP Offices of the world. Being able to digitally file a design application with the EUIPO is likely to be faster than taking any “detour” via a national IP office.

Simplified examination

• For national designs, what already applied to Community (now EU) designs will be mandatory for all national designs: the design will become even more of an unexamined right than before. National IP offices will not be allowed to examine for novelty and individual character. 
• In most countries, however, this change will have no major consequences. Only Finland, Hungary, the Czech Republic and Slovakia still provide for such an ex officio examination. 
• There is a new, ground for refusal of protection “where the design contains a total or partial reproduction of elements belonging to cultural heritage that are of national interest”. The relevance of this provision is yet to be seen, but it is at least consistent with what is included in the WIPO Design Law Treaty recently adopted in Rihad. The EU design does not have it.

Simplified cost structure

The cost structure has also been simplified in several ways; the key ones are as follows:

• There is no longer a separate publication fee, but this is automatically included in the registration fee. This aligns the design filing procedure with the European trademark procedure. 
• The reforms will also eliminate a widely used cost-saving tactic, namely registering a design, but delaying publication by paying the publication fee late instead of paying the deferment fee. In the future, anyone who wants a later publication will have to pay the additional fee for deferred publication. The application can then be deferred for up to 30 months,) while keeping it confidential. This applies not only to EU designs but will also be mandatory for national designs. 
• Collective applications will now cost the same, regardless of how many designs are included. 
• The renewal procedure is also simplified and aligned with the trademark procedure, with the renewal period starting six months before the expiration date of the design. 

Modernise

Wider definitions 

The new regulation introduces new definitions of “design” and “product”. 

•  “Design” means “the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features”. 
• “Product” means “any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including (a) packaging, sets of articles, spatial arrangements of items intended to form an interior or exterior environment, and parts intended to be assembled into a complex product; (b) graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces”. 

The underlined bits are particularly innovating. The broadening of these definitions echoes the rapid evolution of digital markets and the increasing importance of protection in a virtual world. With these changes, the EU legislator is hoping to make the concept of design permanent for the future and open to new, currently unknown technologies. 

New technologies

• For example, we do not currently know what is meant by “spatial arrangements of items intended to form an interior or exterior environment” in the product definition. 
• It could perhaps be used to cover the appearance of virtual places in the metaverse, and also the layout of retail shops. Until now, the latter was only possible in extremely exceptional cases through trade mark protection if distinctiveness could be proven (such as in the Apple Inc. v Deutsches Patent-und Markenamt case). 
• Virtual items that only exist within video games or NFTs could potentially now be protected by a design. 

Animations

• Similarly, as “movement, transition or any other sort of animation” is now included in the definition it will be easier to protect complex designs and animations.
• Currently, animations can only be protected as “flip books”, with a limit of seven views. 
• The new Design Directive expressly states that the reproduction of designs in the registers “may be static, dynamic or animated and shall be effected by any appropriate means, using generally available technology, including drawings, photographs, videos, computer imaging or computer modelling”. 
• This provision, however, does not exist in the Design Regulation. It is hoped that the EUIPO will also open up its guidelines for this soon.

Look out for our final article in this series which will focus on new technologies such as 3D printing and AI.