The European Commission publishes the proposals for a revised Regulation and Directive on designs

On November 29, 2022, the European Commission published the long-awaited proposals for a revised Regulation and revised Directive on designs. The two proposals will now be transmitted to the European Parliament and the Council for adoption. This post summarises the main innovations of the two proposals.

New definitions for “design” and “product” (Art. 2 Draft Directive, Art. 3 Draft Regulation)

Draft Directive and Draft Regulation suggest a new definition for “design” and “product”, respectively. The scope of design protection is thus broadened in response to technological advances in 3D printing and the metaverse.

Under the new definition, “design” 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 "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” [emphasis added]. This will enable design protection for 3D CAD files (necessary to print a 3D model) or for virtual designs in the metaverse.

Draft Directive and Draft Regulation also explicitly recognise that graphical user interfaces and interior environments (such as store interiors) are eligible for design protection.
No general requirement of visibility (Recital 17 Draft Directive, Recital 10 Draft Regulation)

Current EU design legislation requires that component parts (i.e. car engines) of complex products (i.e. cars) remain visible during normal use to be eligible for design protection.

The visibility requirement does not expressly apply to “ordinary”, non-complex products, such as a cup, dress or shampoo bottle. However, the authors of Legal Review on industrial protection in Europe argued that all designs (and not only designs for complex products) should be “visible” to be protected. Design rights protect visual appearance; thus, visibility is presupposed by the nature of design rights.

The Court of Justice seemed to hint in the same direction in case C-361/15P. There, it stated that “the fact that a characteristic of a design is visible is an essential feature of [design] protection” (para. 63). In the same line, the General Court stipulated that chocolate filling inside a cookie is not protected under design law because it is not visible (case T-494/12).

Nevertheless, Draft Directive and Draft Regulation discard the general visibility requirement. According to Recitals, design features do not need to be visible at any particular time situation in order to benefit from design protection. Visibility is, however, required in the application for registration: design protection is conferred only for those features of appearance of a registered design that are shown visibly in the application for registration (art. 15 Draft Directive, art. 18a Draft Regulation).
No design protection for “must-match” spare parts (Art. 19 Draft Directive, Art. 20a Draft Regulation)

Twenty five years after the adoption of Design Directive 98/71/EC, the national transitional regime for design protection of spare parts is finally come to an end. Draft Directive and Draft Regulation include a repair clause for spare parts. Under the repair clause, design protection is not conferred to component parts whose appearance is dependent on the appearance of the complex product concerned (“must-match” spare parts).

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. The new provision thus codifies the ruling in case C-397/16 – Acacia.

Under the Draft Directive, designs, registered before the entry into force of Draft Directive, will be protected for a transitional 10-year period.
Protection against illegitimate 3D printing (Art. 16(2)(d) Draft Directive, Art. 19(2)(d) Draft Regulation)

In addition to revising definitions, Draft Directive and Draft Regulation also introduce a new exclusive right to combat illegitimate 3D printing.

Accordingly, the new Art. 16(2)(d) Draft Directive and Art. 19(2)(d) Draft Regulation provide that “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 it is applied]” is subject to the right holder’s authorisation.

The new right applies to 3D models’ creators (“creating”), intermediaries such as 3D printing online platforms (“sharing or distributing”), and end-users (“downloading” and “copying”).

Nevertheless, certain uses will be exempted as acts that are carried out privately and for non-commercial purposes.
Goods in transit (Art. 16(3) Draft Directive, Art. 19(3) Draft Regulation)

Draft Directive and Draft Regulation also introduce a new exclusive design right against goods in transit. The right holder will be entitled to enforce his design rights against goods that have not been released into free circulation in the EU (i.e., they are in transit, being stored at a warehouse, or transhipped in a port). This means that EU design rights will be exercised on goods that originate from, and are destined to, a non-EU country. Similar provisions regarding trade marks have been harshly criticised by scholars as potentially encroaching upon the freedom of transit and impeding international trade.
Administrative invalidity proceedings for national designs (Art. 31 Draft Directive)

Art. 31 Draft Directive requires EU Member States to introduce administrative invalidity proceedings for national designs. This means that design validity shall be first challenged before the national IP Office, and only then in court proceedings. This provision has already been introduced for national trade marks (Art. 45 Directive (EU) 2015/2436).
Cumulation with copyright (Art. 23 Draft Directive, Art. 96(2) Draft Regulation)

The principle of cumulation of design and copyright protection is maintained. It now explicitly mentions that the only condition for cumulation is that copyright requirements are met, as interpreted by the Court of Justice in C-683/17 - Cofemel [see posts by The IPKat here].
Other provisions

Other provisions, suggested in the revised design legislation, include:
  • National design protection only through legislation (Art. 3 Draft Directive). Unregistered national designs will no longer be possible under the Design Directive. Previously, unregistered designs only existed in the UK, so it will not have any major impact on Member States. Unregistered EU-wide designs remain available.
  • New limitations on designs rights (Art. 18(1) Draft Directive, Art. 20(1) Design Regulation). The list of permissible uses is complemented with “acts carried out for the purpose of identifying or referring to a product as that of the design right holder” (referential use), and “acts carried out for the purposes of comment, critique, or parody”.
  • Mandatory grounds for invalidity in national proceedings (Art. 14 Draft Directive). New mandatory grounds include conflicts with earlier trade marks, earlier copyright works, and earlier rights under Art. 6ter Paris Convention.

What was not included

Surprisingly, neither of the Proposals suggests codifying the definition of “informed user”, as found in the settled case-law of the Court of Justice [see earlier posts by The IPKat here]. Codification had been suggested by the Legal Review from 2016 in order to achieve legal certainty. This has also been a standard practice during the latest revisions of trade mark and copyright legislation in deemed appropriate circumstances. For instance, the so-called Sieckmann criteria for representation of a mark (case C-273/00) were codified as part of the latest EU trade mark reform. Codifying the definition of “informed user” in the revised legislation would also allow the EU to include such provisions in the upcoming trade agreements with non-EU countries.
The European Commission publishes the proposals for a revised Regulation and Directive on designs The European Commission publishes the proposals for a revised Regulation and Directive on designs Reviewed by Anastasiia Kyrylenko on Wednesday, November 30, 2022 Rating: 5

1 comment:

  1. Presumably "National design protection only through legislation" is supposed to read "...only through registration".

    But the draft directive appears at what is admittedly a brief glance to be a little self-contradictory.

    According to Art. 3, Member States shall protect designs solely through the registration of the designs.

    Member states aren't allowed to invent national unregistered design regimes then?

    Except Art. 22 says "Directive shall be without prejudice to any provisions of... the law of the Member State concerned relating to unregistered design rights..."

    So maybe Member States are allowed unregistered designs?

    Art 23, as the Kat says, seems to try to entrench Cofemel, though it begins "A design protected by a design right..." so does it still apply once the design is no longer protected, because the right has expired? Because that is normally the point that people start to worry about whether their bicycle or pair of jeans or rowing machine is protected by copyright or not.


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