Insights Council of the European Union adopts two positions on designs protection legislation


The EU Designs Directive 98/71/EC harmonised requirements for registered design protection in the European Economic Area.  The Community Designs Regulation (6/2002/EC) (“CDR”) created a regime for protecting designs throughout the EU, similar to the EU trade mark, by creating a system of registration administered by the EUIPO.  It also created a system for protection of unregistered Community design right, a right which automatically comes into existence by making products incorporating the design available to the public within the EU.  The substantive provisions of the CDR reflect those of the Directive.

In November 2022, the Commission published proposals to modernise designs law by proposing several changes to the Directive and the CDR (including renaming Registered and Unregistered Community Designs as Registered and Unregistered EU Designs).  These proposals are currently going through the legislative process and, most recently, the Council published its proposed amendments to the Commission’s text.

The Commission’s proposals include changes to reflect technological advancements, such as the expansion of the definition of a “design,” which covers the appearance of a product, to include “the movement, transition or any other sort of animation” of the features of the appearance of a product.  Similarly, it proposes to expand the definition of a “product” to include digital products (e.g. graphical user interfaces), and makes it clear that the appearance of and the spatial arrangement of interior environments (e.g. the layouts of retail stores) can be protected.

The Commission proposes that design protection is conferred on registered designs only for those features of appearance that are shown “visibly” in the application for registration, and introduces a new design notice (the letter D in a circle) which rights holders may use to inform the public that the design is registered.  Commission proposals also include a requirement that Member States provide an administrative procedure for claims of invalidity of a design to avoid the expense of claimants having to go to court to contest the validity of a design.

The Commission makes it clear that 3D printing in relation to a protected design could amount to infringement if done without consent, and proposes referential use and uses of a design for the purposes of comment, critique or parody as defences to infringement.  Current legislation provides a temporary provision that, subject to certain conditions, protection is not conferred on a design which consists of a component part of a complex product (if the appearance of the component part depends on the appearance of the complex product) when used for the sole purpose of the repair of that complex product so as to restore its original appearance.  This is a defence to an infringement claim.  The Commission is seeking to make this provision permanent with a view to increasing competition in the spare parts market.  Finally, there is a proposal enabling registered design right holders to prevent counterfeit products transiting through the EU.

The Council generally supports the Commission’s proposals.  The Council proposes to include protection for exterior, as well as interior, environments.  It also proposes that the application for registration of a design can proceed if there is a “sufficiently clear” representation of the design and, further, that an application to register can proceed even if all the required documents representing the design are not filed provided the applicant files a representation of the design as a whole that is sufficiently clear.  The Council also proposes that the creation of an administrative procedure for invalidity proceedings should be voluntary for Member States and not compulsory.  Finally, it proposes that the transposition period for the new law should be 36 months and not 24 as proposed by the Commission.

The Council will commence negotiations with the EU Parliament once the latter has adopted its position.  These negotiations are currently expected to take place early in 2024 with the new law anticipated to come into force in the first half of 2024.

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