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Review of the design protection system in the EU, after 20 years

By: Tamara De Cubas, Marta Carrasco, Esther Armero

November 20, 2023

Design protects the appearance of a product, which is a decisive factor in consumers’ choice of one product or another, and thus confers an important competitive advantage on companies.

Currently, the current EU Design Legislation is constituted by Directive 98/71/EC on the legal protection of designs, which harmonizes the laws of the member states on design matters, and Regulation (EC) No. 6/2002 on Community designs, which regulates an autonomous system of unitary protection with effects throughout the EU, with both protection systems (national designs and Community design) coexisting in parallel.

However, the harmonization achieved through Directive 98/71/CE is only partial and the Community Design Regulation has been amended only once, in 2006, by the accession of the EU to the Hague international registration system. Furthermore, no agreement was reached on the legal protection of spare parts for repairs.

Therefore, after twenty years, a review of the design protection system in the EU is needed to encourage innovation and the creation of new designs in the digital era and to make their protection more effective, coherent, and accessible.

To this end, the Council of the EU, in its conclusions of November 10, 2020, on intellectual and industrial property policy and the review of the Union’s industrial design system, asked the Commission for proposals to modernize the design protection systems in the EU, and on November 28, 2022, the EU Commission published its proposal for amendment, which on September 25, 2023 the EU Council of Ministers in its General Guidelines endorsed in its main objectives and also introduced several improvements, and the proposal is currently being processed in the EU Parliament.

This new legislative package consisting of the recast of the Design Directive 98/71/CE and amendment of the Design Regulation No. 6/2002 will update the design protection system in the EU, after more than twenty years of validity.

Amendments to the EU Design Regulation

  • It will update its terminology and definition of “design” and “product”, adapting it to the digital era and future technological advances, extending its protection also to new designs and models not incorporated into physical products.
  • It will offer greater legal certainty by clarifying and delimiting the scope of protection of the design in the characteristics that are visibly reflected in the registration and not being a requirement for its protection that such characteristics be visible in its specific use. Except for drawings and models of the components of a complex product, which, for their protection, must be visible during normal use of the product.
  • It shall specifically provide for the protection of the registered design against counterfeiting by allowing its owner to prevent the entry of infringing products, even if such products are not to be placed on the Union market.
  • It will extend the limitations to the rights conferred by the EU design registration, adding to the permitted uses those of quotation or teaching, referential uses in comparative advertising, and uses for purposes of commentary, criticism or parody, or purposes of artistic expression.
  • It shall establish as permanent the Repair Clause of the components of a complex product and is used for the sole purpose of repairing such complex product to restore it to its original appearance. 
  • It shall make available to the owners or their authorized representatives, the symbol (D) indicating the registration of the EU Design.
  • EU design applications may only be filed with the EUIPO.
  • Adopt measures that will update, simplify, and accelerate the registration procedures allowing a clear and accurate representation of all designs and models, and adaptable to technical progress.
  • It will reduce the amount of filing fees and adjust the structure of EU design fees.
  • It will facilitate the filing of multiple EU design applications by simplifying the requirements and costs of multiple applications, to attract more registrations. The class unit requirement is eliminated, and a flat fee is established for each additional design. However, a maximum limit of fifty designs is introduced.
  • The means of notification and communication shall be electronic only.
  • It will introduce the figure of continuation of the procedure, making it possible to meet an unobserved deadline.
  • It will adopt the principle of cumulation of EU design and copyright protection.

Modifications to the Design Directive

The recast of the Design Directive modernizes and improves its provisions, clarifying the scope and limitations of design rights, and harmonizing the main rules of design registration procedure between the systems of the Member States and the Union system. It also promotes a single market for spare parts for repairs. Among its main novelties;

  • It updates and adapts the definitions of “design” and “product” to current and future technological advances and delimits the scope of protection of the design in the characteristics visible in the register.
  • Protects the registered design against counterfeiting by allowing its owners to prevent the entry of infringing products.
  • It establishes among the limitations to the rights conferred by the design registration, the uses of quotation or teaching, referential in comparative advertising, and for purposes of commentary, criticism, or parody.
  • Repair clause for components of a complex product to repair and restore the initial appearance of the complex product for new designs and establish a transitional period of ten years for previous designs.
  • Eliminates the class unit requirement in multiple applications.
  • It allows the postponement of the publication of the design for a maximum period of thirty months.
  • It clarifies the rules on the nullity of designs and makes it possible to establish an administrative appeal procedure, without the need to go to court.
  • It provides for the possibility of cumulating design and copyright protection.

In conclusion, the amendments to the Directive and the Regulation, will facilitate the design registration procedure (making design protection more accessible and economical), further harmonize the procedures between the national and European systems (providing consistency, efficiency, and legal certainty), introduce new forms of design representation with the use of new technologies (thus adapting to the digital era) and further harmonize design protection for spare parts for the repair of complex products (which will liberalize the spare parts market and reduce the cost to consumers). As a result, the number of design registrations in the EU will increase and companies and SMEs will become more innovative and competitive.

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