EU: New year, new… EU design law?

The revisions aim to ensure that design protection is fit for purpose in the digital age and more accessible and efficient for individual designers, SMEs and design-intensive industries in terms of lower costs and less complexity, increased speed, greater predictability and legal certainty.

Proposals for changes in the Community Design Regulation

With the planned amendment of the CDR, we highlight content that is to be revised or supplemented as follows:

• Terminology update: The outdated term "Registered Community Designs" or "RCDs" is replaced by the modern term "Registered EU Design" ("REUDs"), thereby also aligning the terminology with both the Lisbon Treaty and the EU Trademark Regulation.
• Definitions of "design" and "product": These definitions have been updated, clarified and broadened to render them future proof in the light of technological advancement, in particular to cover new technological designs, which are not embodied in physical products. The new definition of a "design" now includes movement, transition or any other sort of animation of features that can contribute to the appearance of designs, in particular those not embodied in a physical object. As for a "product", the new definition means "any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a digital form". This will provide for design protection for 3D print models or for virtual designs in the metaverse.
• Object of protection: To increase legal certainty with regard to the "visibility requirement", it is proposed that design protection should be granted (only) for those features of appearance which are visibly represented in the application for EU design registration.
• Limitation of the rights conferred: The list of permitted uses will be enlarged by the addition of referential use, criticism and parody.
• Repair clause: The transitional "repair clause", which is currently contained in Art 110 CDR, is to be converted into a permanent provision. The scope of application of the repair clause will be restricted to component parts whose appearance is dependent on the appearance of the complex product concerned and it should be made explicit that the repair clause can be used as a defence against infringement claims only if consumers are duly informed of the origin of the product to be used for repairing the complex product.
• Design notice: A "D" in the circle will be made available as an indication of a design registration.
• Specification on requirements of design representation: It will be possible to adopt implementing acts in which details will be specified that must be included in the application (including the updating of the standards of design representation) of a registered EU design in order to make it suitable for the digital age.
• No filing of specimen: Given the negligible number of specimens filed, the option of filing a specimen instead of a representation of the design will be abolished.
• Multiple applications: Multiple applications will be possible irrespective of the so-called "unity of class" requirement, thus without such having to be limited to products of the same Locarno class.
• Reduction of the level of the application fees.

Proposals for changes in the Community Design Directive

In parallel to the proposals regarding an amended Community Design Regulation, the Commission also suggested a recast of the Directive on the legal protection of designs. This concerns essentially the following points:

• Adaptation of substantive provisions and procedural rules to the amendments proposed for the CDR.
• National design protection through registration only: The discretion for EU Member States to grant design protection at national level not only in registered, but also in unregistered form, will be removed. However, the protection for unregistered EU design rights remains in place.
• Exhaustive statement of grounds for refusal: The grounds for non-registrability of EU designs should be set out in an exhaustive manner, ensuring that the procedure for obtaining a registered design presents the minimum cost and difficulty to applicants, as with the EUIPO.
• Mandatory grounds for invalidity: Previously optional grounds for invalidity (e.g. use of a distinctive sign in a later design or if the design constitutes an unauthorised use of a copyrighted work) will be converted into mandatory grounds for invalidity, which must now also be provided for on a national level. This will enhance predictability and consistency with the EU design system (where those grounds were mandatory before).

Outlook

The two proposals will now be transmitted to the European Parliament and the Council for adoption under the ordinary legislative procedure. When the new proposals are adopted, the new rules of the Design Directive will be transposed into the national law within two years. As regards the Community Design Regulation, part of the changes will become applicable within three months after its entry into force, and the rest when the delegated and implementing acts are enacted (18 months after entry into force). Therefore, we will definitely hear more about the upcoming changes in European design law in 2023.

¹ Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002, COM(2022) 666 final.

² Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on the legal protection of designs (recast), COM(2022) 667 final.

author: Birgit Kapeller-Hirsch