For several weeks now, we have been sharing the key changes introduced by the new EU design package. After introducing the highlights, we’ve looked at:

• The changes in terms of enforcement, including the repair clause;
• The relationship between design rights and copyright; and
• Filing and examination.

In this article, we will focus on how new technologies have been considered in the new EU design package. 

Twenty years ago, Registered Community Designs were revolutionary. Since then, technology has continued to evolve and transform our daily lives. With the development of technologies, the designs and products that can be protected have changed over the years. Products can exist only in virtual or augmented reality, can move, can be transformed, animated or generated by artificial intelligence (AI). 

It was therefore necessary to update the regulation to take the impact of technology into account. Consequently, one of the main aims of this overhaul was to improve and adapt the protection of design to new technologies. 

Pushing back the boundaries of designs: extension of the definitions of design and product

While it was not possible to register virtual designs under the old regime, which only allowed the registration of images, photographs or drawings, those days are over! 

To adapt to new forms of creation, especially digital and audiovisual, the legislation has extended the designs and products that can be protected. Movement, transitions and any other type of animation are now included among the features that can be protected by designs.

New Article 3.1 of the Regulation and Article 2.3 of the Directive define the design as:

 “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”. 

Articles 3.2 of the Regulation and 2.4 of the Directive also extend the definition of “product” to cover the appearance of digital products. A product is: 

“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”. 

These new definitions of designs and products are one of the pillars of the reform. They give a legal framework for designs developed using current new technologies, without restricting the possibility of future technological innovations. 

Moreover, the virtual designs, light effect, dynamic interfaces, which have no physical form, can now potentially be protected as there is no longer any requirement for the product to be physically tangible. 

Drawing the designs: more possibilities for graphic representation

The extension of the definitions of designs and products requires the legislator to provide for adequate means of representation, as the subject matter of the design must be clear and unambiguous in the register. Therefore, the tools provided by the national and European offices should also make this possible for these new variants of designs and especially for animations.

Although it was already possible to represent animations to obtain protection under design law by means of views, the filing procedures were not adapted, since only static images could be registered as views. The registration of a Community Design also imposed a limit of seven views per registration. Recording a complex image was therefore not possible. For example, in cinema film, you need at least 24 frames per second to create the illusion of movement. Therefore, the limitation to seven views is inadequate to represent a complex (animated) design. 

Under Article 26 of the new Directive a design can be represented not only by static images, but also by dynamic and animated images. It provides that:

“The reproduction 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”.

It is expected that EUIPO will somehow incorporate that thought into their guidelines before the new EU Design starts in May 2025 and abandon the limitation to seven views. 

This extension enhances the protection for design as a variety of representations are now possible. This should also make it possible to reduce, if not completely resolve, the problem of inconsistent views. 

Although it has been possible to register motion marks since the reform of EU trademark law, as there is no longer a requirement for graphic representation, this possibility is not widely used. Under the new design legislation, more motion designs are anticipated to be registered, particularly as distinctiveness is not a requirement, unlike trademarks.

A 360° protection for EU Designs 

The growing deployment of 3D printing technologies in different industries, including with the help of AI has become a real challenge for design right holders to effectively prevent illegitimate copies of their protected designs.

To address this, Article 19 of the Design Regulation and Article 16 of the Design Directive confer on the design holders the exclusive right to prevent any third party to create, download, copy and share or distribute any medium or software which records the design for the purpose of enabling a product to be made. 

This right should further strengthen the protection of EU Design by clarifying the rights of owners regarding technological innovation.

However, the regulation has the potential to be considerably overreaching. 

• On the one hand, it also covers media that can be used to print products with a 3D printer. These are usually CAD files that are available in special file formats such as STL or AMF. Until now, neither creating nor sharing such files was an infringement, at least if they were not intended for commercial use. In future, even creating such a template for the 3D printer will be inadmissible, as will sharing it. This could become a significant liability problem for platforms on which users exchange information about 3D printing and which previously allowed such templates to be shared and downloaded legally.
• Even more far-reaching potentially is the mention of ‘software which records the design’ to create a 3D print template for a protected design. Since software is unlikely to distinguish between self-created, free and protected designs, this provision could either be completely meaningless or make the software as such illegal. After all, how is software supposed to recognise that the object it is scanning is protected by a design? 

As in all cases of well-intentioned reforms, this leaves a considerable area of legal uncertainty, and it will probably take several years before clarity gradually emerges.

This is the final article in our short series of articles on the new EU design package. In 2025 we will continue with further articles looking at particular aspects of the package – watch this space for new updates!