Introduction

On 29 November 2022, the European Commission published its long-awaited proposals for a new Directive on the legal protection of designs (hereafter “DDir”) and a new Regulation on Community designs (hereafter “DReg”). The Directive is the instrument used to provide harmonization amongst EU Member States with regard to their national design laws. The said Regulation, on the other hand, created the EU wide Community design right. The latter will receive a new name: “EU design”.

These proposals are the first substantial review of EU design law in over 20 years and are the result of an ongoing evaluation phase already started in 2015. ECTA, a user association promoting knowledge and professionalism of the European IP law community, has been actively involved in this evaluation process and expressed at numerous moments it’s view on the current EU design system.

During the public consultation it was noted that almost 2/3 of the respondents consider that the design protection system in the EU works well. Consequently, it is not surprising that the recently published proposals do not contain major changes. We will briefly mention and comment the most relevant changes:

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

The proposals suggest a new definition for “design” and “product” to confirm the actual practice that protection is possible for designs not being embodied in physical object. As such, graphical user interfaces (GUI) and the “spatial arrangement of items intended to for an interior environment” are explicitly mentioned as examples of “products” eligible for protection. In this context, it is also explicitly recognised in the proposals that also the movement, transition or any other animation can contribute to the appearance of a design. On this point, the proposal primarily confirms the current practice and adjust the legislation to be up-to-date with new technologies like the metaverse.

No general requirement of visibility

Art. 4(2)(b) of the current Regulation requires that component parts of complex products (e.g. a car engine) must remain visible during normal use to be separately eligible for protection. The Legal Review on industrial design protection in Europe advocated for a general requirement of visibility. Nonetheless, the recitals of the European Commission’s proposals now explicitly clarifies that the requirement of visibility only applies to design protection of component parts of a complex product. Consequently, for all other products, design features of a product do not need to be visible at any particular time or situation of use in order to attract design protection. For example, the interior of a jacket is protectable; the exterior of a part of a motor engine cannot be protected because not visible while driving the car.

Goods in transit

The proposals provide that owners of registered designs can prevent infringing goods in the EU or relevant EU Member State, even if the goods are not intended for release on the EU market. This right to block goods in transit lapses as soon as the holder of the products establishes that the design right holder is not entitled to prohibit the placing of the products on the market in the country of final destination. These draft provisions thus mirror the amendments made in the 2016 with regard to trademarks.

New provisions on 3D printing

Under the current Regulation, the provision of 3D printing software encoding the design does not violate the designer’s rights. Accordingly, the 2020 Evaluation Report questioned whether design rights provide sufficient protection against 3D printing. For example, CAD files are not in themselves protectable as designs and do not as such infringe design rights, but they contain “instructions” for producing a protectable design, which may infringe other design rights.

The proposals recognise the challenge of 3D printing and introduce the new exclusive 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. According to the proposal also CAD files containing “instructions” for reproducing a protected design may constitute an infringement. In specific, the proposal targets 3D model developers, end-users and intermediaries (e.g. online service providers).

However, the protection against 3D printing technologies might be limited in cases of private use.

Repair Clause – further clarification needed

The “repair clause” concerns the repair of complex products and the question to what extent right holders can or can’t prevent the use of a (necessary) spare part based on their design rights. The “repair clause” and its scope has been a very controversial issue for many years. With regard to the current “repair clause” applicable to Community design rights the CJEU ruled in the famous Acacia-case that the “repair clause” does not only apply to so-called “must match” parts, e.g. parts whose appearance is dependent on the appearance of the complex product (e.g. car fender). According to current case law also spare parts which are not dependent on the appearance of the complex product (e.g. alloy wheels of car which are interchangeable) fall under the scope of the current repair clause. However, the party relying on the repair clause needs to comply with a “duty of diligence”. The repair clause now proposed by the Commission deviates from this case law since it shall not be limited to “must match” components and it is not clear if the “duty of diligence” is the same as defined by the CJEU.

Registration of Community Designs - Changes affecting costs and overall presentation

The Commission’s proposal also brings some changes to the process of registering Community Designs, inter alia addressing the representations to be submitted with an application as well as the possibility of multiple applications.

The 2020 Evaluation Report noted the inability to register dynamic design views and the limited options for filing the representations of a design. Currently, for example animations can only be taken into account very inadequately.

The Commission addresses this issue and proposes that the representation of a design might consist in any form of visual reproduction of the design. The reproduction might be static, dynamic or animated and shall be effected by any appropriate means, using generally available technology (e.g. 3D digital representations and video files).

Furthermore, according to the Commission’s proposal in the future applicants shall be able to combine several designs in a multiple application without being limited to products of the same Locarno class. This will allow more applicants than before to benefit from the bulk discount that is granted for multiple applications. However, the number of designs to be filed with a multiple application is considered to being limited to 50 designs.

Cumulative protection subject to other forms of IP rights

Subject to the Commission’s proposal cumulative protection under design law and copyright law remains possible. This is in line with the CJEU’s case law that the same object might be protected under both regimes if the respective requirements are met. Hence, design owners might be able to rely not only on design law, but also on copyright protection.

However, design owners should also be aware that a registered Community design might also be declared invalid if the design constitutes an unauthorised use of an earlier work protected under the copyright law of a Member State.

Conclusion & outlook

In general, the proposals are welcomed as they achieve greater harmonisation in the area of industrial designs and by bringing EU design legislation in line with new technologies and digitalisation.

The two proposals are currently being discussed before the European Parliament and Council. The European Commission hopes that the new legislation can be voted in 2024.

Altogether, the proposed changes are moderate and in line with what could be expected in view of the global satisfaction about the current functioning of the design system. Noteworthy is that some additional proposals are expected to follow as regards the implementing legislation, particularly as concerns abandoning the maximum of seven different views per design limit, which would in particular be helpful when registering the design of sophisticated products or products with moving parts.

Authors:

Roman Brtka, ECTA Design Committee Member, Bird & Bird, DE

Rogier Goos, ECTA Design Committee Vice-Chair, Winger, BE

ECTA (formerly known as European Communities Trademark Association) is one of the leading European IP associations particularly active in the field of trade mark law, designs, geographical indications, copyright, anti-counterfeiting, data, internet and international trade. ECTA gathers over 1,200 members specialised in Intellectual Property, mainly trade mark attorneys, lawyers - whether in private practice or industry - and academics, from all Member States of the EU and beyond.

Website: www.ecta.org  Email: ecta@ecta.org