For many years, it has been possible to obtain registered IP protection for the designs of products that have visual appeal in the Member States of the EU. Separately, this is also the case in the UK. The resulting registered industrial design rights have become a valuable and powerful legal tool in every company’s IP strategy although this form of protection is still underused by many companies.
After more than twenty years, the industrial design protection system in the EU was ready for a revamp to make design protection in the digital age more efficient, affordable and future proof (we had commented on the draft proposals adopted by the EU Commission on this blog here). The long-awaited new EU Design Regulation and Directive are now expected to be formally adopted by the EU Council and published shortly. The new EU Design Regulation will then enter info force after four months, and EU Member States will have three years to transpose the Directive into their national laws. In this blog, we will focus on the key changes introduced by the new law.
Key changes ahead
The key changes to note are:
- For the sake of terminological consistency, Registered Community Designs (formerly RCDs) will be designated Registered EU Designs (REUDs).
- Similar to the copyright symbol, there will be a design notice available to holders of Registered EU Designs in the form of the letter D enclosed with a circle.
- The definition of “design” will be updated to explicitly include designs which materialize in non-physical objects especially in relation to digital formats. In so doing, Registered EU Design protection will be available to protect aspects of design relating to movement, transition or any other sort of animation to the extent relating to the appearance of a product. This may become especially important for protection of NFTs and other items in Web3, for which we have seen an increase in trademark filings. Unlike trademarks, designs are not subject to use requirements, and the claimant does not have to substantiate trademark like use by the alleged infringer.
- The EU legislator has decided against clarifying whether an AI may be considered as a designer, though.
- Regarding the rights conferred by a Registered EU Design, the scope of protection has also been clarified by explicitly including 3D printing in the activities that can be prohibited. Corresponding to the EU trademark system, holders of EU designs will also be able to prevent counterfeit products transiting through EU territory.
- Probably the most discussed change relates to the end of the transitional regime for the design protection of spare parts. This includes the conversion of the so-called temporary repair clause as currently contained in Article 110 of the Design Regulation. The new Regulation makes this clause permanent (with some adjustments considering the European Court of Justice’s case law). According to this clause, protection as an EU Design shall not exist for a design which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used for the purpose of the repair of that complex product so as to restore its original appearance. The manufacturers and sellers of spare parts which are used for repair purposes will have an express duty to inform consumers about the origin of any spare parts that they produce and/or sell so that consumers can make an informed choice as regards the source of spare parts when deciding whether to buy spare parts from the vehicle manufacturer or an aftermarket supplier of spare parts. The best example of this relates to the long running debate between the manufacturers of vehicles on the one hand and those companies who want to supply replacement body panels for those vehicles. The express intention here has been to promote competition in the market for spare parts which are used to repair more complex products once they are otherwise in use.
- The repair clause is also included in the new Directive providing for an alignment between the EU Design system and the national design laws. This means that those countries that have not opted for implementing a repair right into national law so far will now have to do so. Further, the new Directive provides for a transitional period of eight years during which existing design rights will continue to be protected, so that vehicle manufacturers can strategically adjust to the changes. However, in countries such as Germany, that had introduced repair clauses, but applied them only to newly filed designs, this means that real competition between replacement parts from the manufacturer of the original part and the replica will now take place much earlier.
- The new Regulation further emphasizes the principle of IP rights cumulation between design and copyright protection taking account of EU case law (reported on this blog here).
Many design users will welcome the new provisions enhancing the user-friendliness of the EU Design system. In particular:
- The so-called unity of class requirement will be abolished so that applicants are able to combine several designs in one multiple application without being limited to the same Locarno Class thus benefiting from a bulk discount.
- Also, the schedule of fees for EU Designs will be simplified to further increase transparency and affordability, making design protection more accessible for SMEs and individual designers.
Raising design awareness and taking action
Industrial design rights are still underused and underestimated, not only by SMEs. With registration being a matter of a few days and relatively low costs, designs provide quick and effective protection against product imitations, which is particularly interesting for companies in fast-moving industries with ever-changing product lines or before tradeshows. The new law certainly helps to boost brands and competitive advantages.
After China acceded to the Hague System for the International Registration of Industrial Designs in February 2022 (reported on this blog here), the EU design reform package finally coming into force is another milestone towards more effective and future-proof design protection at international scale. Chinese design law provides for a standard of absolute novelty, though, whilst the EU design system grants the design applicant a grace period of twelve months to test the design on the market, which must be considered to be able to obtain legal protection in all desired territories.
In all of this, our multinational team of design experts will help you find the right strategy to navigate such pitfalls and make the most of your well-designed products.