Design law: What's up-and-coming?

Generally, a "design" means the appearance of the whole or a part of a product resulting from the features of the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Thus, designs protect industrial or handcrafted products, as well as product packaging, logos, graphical designs, fonts and much more.

There are different parallel systems providing design protection in the EU. You can choose to protect a design with the European Union Intellectual Property Office (EUIPO) before its commercialisation and in that way obtain a registered community design with a maximum protection period of 25 years. Alternatively, you can commercialise it directly without registration by relying on what's known as the unregistered community design, which confers protection from the day of its publication in the EU for three years. Additionally, national systems in the Member States coexist with the community design system and provide for national design protection.

While a large part of design law is harmonised (e.g. material requirements for obtaining design protection, rights of design owners), an important exception is protection for designs constituting a component part of complex products for the purpose of the repair of that complex product to restore its original appearance. While most EU Member States provide design protection for such spare parts, several also stipulate contrary provisions. Germany recently adopted a provision whereby spare parts are not protected as designs. Due to only partial harmonisation, the economically important spare parts market continues to be fragmented, causing considerable legal uncertainty.

Where will the journey take us? Expected improvements in European design legislation

There have been aspirations to assess and detect needs for improvements to design legislation at the European level. Research, analysis and targeted surveys were carried out as part of two studies by the European Commission (EC) in 2015 and 2016 on the economic and legal review of the design protection systems in Europe. In 2018, the ECTA, INTA and MARQUES associations produced a Joint Paper on the Legal Review on Industrial Design Protection in Europe. Subsequently, the EC published an Evaluation of EU Legislation on Design Protection in November 2020.

The EC's evaluation concluded that the objectives pursued by the EU's design legislation continue to be highly relevant. It indicated that the steady increase in the number of design applications filed with the EUIPO proves both the success of the community design system and the rising importance companies give to protecting their designs. Nevertheless, the evaluation found that the design protection system may be underused, partly due to a lack of awareness. It revealed that the legislation is not fully adapted to the digital age, resulting, e.g. in uncertainties about the possibility to protect graphical user interfaces (GUIs) as designs or the possibility to file dynamic (not only static) views of designs. The evaluation also exposed certain shortcomings, including a lack of clarity and robustness on certain key elements of design protection, outdated or overly complicated procedures, inappropriate fee levels, lack of coherence of the procedural rules and a lack of harmonisation for spare parts.

"The steady increase in the number of design applications filed with the EUIPO proves both the success of the community design system and the rising importance companies give to protecting their designs."

In January 2021, ECTA, INTA and MARQUES published Joint Comments on the EC's Inception Impact Assessment on the review of the Design Directive and Community Design Regulation. Generally, the EC's intention to revise the EU legislation on design protection with a focus on tackling several shortcomings and modernising the legal framework is strongly welcomed by these associations. In particular, the following aspects were addressed:

• As regards overall modernisation and strengthening of design protection, clarifications in the law regarding eligibility of protection for GUIs as design rights are recommended, changes in the legislation to properly address and fight design infringing goods in transit are supported.
• To improve the accessibility and affordability of design protection in the EU, streamlining and simplifying of filing procedures is recommended, in particular as regards the representation, visual disclaimer rules/description, deferment of publication and ensuring a unified deferment period in all EU Member States, the possibility of obtaining multiple applications in all member states and easing the requirement that such must provide for a same Locarno class and emphasis on electronic filing.
• To ensure enhanced interoperability of design protection systems in the EU, standards for examination of designs will be aligned with the standards already applicable for trademarks, as well as harmonisation towards quick and inexpensive administrative design invalidity systems in all Member States. A political agreement on the issue of spare parts is also desired.
• Finally, greater harmonisation of national enforcement procedures relating to community design rights, the lack of harmonisation of unregistered design protection and the implications of 3D printing are addressed.

Overall, there certainly is a need to reform the current provisions on community design protection at the European level. The EC's legislative proposals are to be expected in due course.

"There certainly is a need to reform the current provisions on community design protection at the European level. The EC's legislative proposals are to be expected in due course."

What's next for protection of community designs?

The protection of community designs has seen steady legal development at European level. Currently, the Federal Court of Justice of Germany has referred questions in two separate cases to the Court of Justice of the European Union (CJEU), which it will rule on.

Regarding unregistered community design protection, the CJEU will give guidance on the extent the disclosure of a product's overall image gives rise to unregistered designs on individual parts of the product. The CJEU will also instruct on the examination of the individual character of a component part of a complex product, in particular whether it depends on the fact that the appearance of the component is not completely submerged in that of the complex product, but creates an overall aesthetic impression independent from that created by the complex product.

In a different case, the Federal Court of Justice of Germany has recently ordered questions to be referred to the CJEU essentially on the visibility of features of component parts of complex products. Pursuant to Art. 3 (3) of Community Design Directive 98/71/EC "a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character". The CJEU is being asked whether a component embodying a design already counts as "visible" in the above-mentioned sense, if the design can be recognised when the component is installed or whether it depends on the visibility under certain use conditions or from a certain viewer's perspective. In addition, questions regarding the interpretation of the legal term "normal use" of a complex product by an end-user are pending.

The CJEU will therefore soon provide further insights and guidance on various design-related questions.

author: Birgit Hirsch