[Guest post] The EU Commission’s proposal to codify visual disclaimers – a great leap for EU design law

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the EU Commission’s recent proposal to codify visual disclaimers in EU design law. Here’s what Henning writes:

The EU Commission’s proposal to codify visual disclaimers – a great leap for EU design law

by Henning Hartwig

On 28 November 2022, the European Commission adopted two proposals to modernise the legislation on design protection: a Proposal for a Regulation amending the Community Designs Regulation [COM(2022)666] (“Regulation”) and a Proposal for a Directive on the legal protection of designs [COM(2022)667] (“Directive”).

These proposals to modernise legislation on design protection point in the right direction. This is particularly true for the Commission’s proposal to codify visual disclaimers in case of partial designs. However, there seems to be room for some improvement as the Committee for Design Law of the German Association for the Protection of Intellectual Property (“GRUR Committee”) made up of design law experts from the academia, the judiciary, the legal profession as well as from industry has submitted elsewhere.

Visual disclaimers, Kat-style

In fact, the GRUR Committee takes the position that any convention, establishing standards of how to interpret a design and how to “read” different types of (solid or non-solid) lines, should be mandatory and binding, including textbook examples of each type of line, as demonstrated in the USPTO Manual but also in the German Regulation on the Preparation of Area Development Plans and the Presentation of the Plan Content, which are both useful and reliable in daily practice.

Overall, the wording of Article 26(6) Directive, according to the GRUR Committee, should read as follows (Annex X suggested by the GRUR Committee has been qualified as being of preliminary character only due to the very short time available):

Subject matter for which no protection is sought shall be indicated by way of visual disclaimers, preferably in the form of non-solid lines, namely dashed, dot-dashed, or dot-dot-dashed lines. Alternatively, shading, blurring or colour shading can be used. Any such visual disclaimers shall be used consistently. Examples are shown in Annex X.

The same wording should be used in the Regulation itself. More precisely, it has been submitted that the entire Article 26 Directive should be added also to the Regulation for the sake of consistency.

This Katfriend is thrilled seeing the EU Commission’s proposal to codify visual disclaimers entering the world of design law, hopefully with some more modifications and facets it was just suggested elsewhere.