The European Commission has submitted to the European Parliament and the Council proposals to reform both the EU and national design protection legislation. The proposals submitted by the European Commission aim to modernise the current European legal framework for designs and increase the harmonisation of the conditions for design protection across Member States. The forthcoming reform is also to update design legislation and respond to the new challenges posed by the development of information technology. The need to modernise design law also stems from the gradually increasing interest in design protection, which stems from the development of new technologies in the field of manufacturing, such as increasingly available 3D printers, or interest in virtual and augmented reality and the emerging trend of the Metaverse. In today’s blog, we therefore provide you a brief overview of selected changes to be brought about by the design legislation reform.
Briefly about designs and their protection in an EU context
Although designs are one of the less used forms of intellectual property rights, their importance is constantly increasing in times of rapid technological development. The appearance of a product or its part, consisting in particular of the features of the lines, contours, colours, shape, structure or materials of the product, can be protected by a design. The registration of a design can thus protect industrially manufactured or hand-made products, their packaging, logos, graphic designs, fonts and much more. The applicability of designs is thus relatively wide in practice, ranging from the appearance of sunglasses to the design of mobile phones.
In the European Union, there are currently several parallel systems providing protection for new designs. One of these is a registered Community design valid throughout the European Union, the conditions of which are provided for in Regulation No 6/2002 (the “Regulation”), and which can be registered with the European Union Intellectual Property Office (the “EUIPO”) with a maximum term of protection of 25 years. The second option is an unregistered Community design, which provides protection for 3 years from the date of its publication and, under specific conditions, may also provide protection against intentional copying of the design, even without prior registration with the EUIPO.
At the same time, national systems in Member States coexist with the Community design system and provide design protection at national level. Much of the national design legislation in EU Member States has been harmonised through Directive 98/71/EC (the “Directive”), which, among other things, harmonises the substantive requirements for obtaining design protection and the rights of design proprietors.
What changes are to be brought about by the proposed design protection reform?
The requirement for the design legislation reform is based, among other things, on the European Commission's November 2020 evaluation of EU legislation on design protection. For example, the published evaluation by the European Commission states that the increasing number of design applications filed with the EUIPO demonstrates the growing importance of designs for entrepreneurs. However, the European Commission has also stated that the design protection system may be underused compared to other intellectual property rights and confirmed that current legislation is not fully adapted to the digital age, for example in the area of protection of graphical user interfaces (GUIs) or harmonisation of the conditions for spare parts.
The proposals to reform the Regulation and the Directive therefore aim to modernise the legislation and strengthen the EU design protection rules to make design protection clearer and more accessible across the EU. Below is a summary of some of the proposed changes:
- Change in the designation of designs. Registered and unregistered Community designs should be referred to as “EU designs” under the amended legislation, replacing the former, now obsolete, designation “Community design”. In particular, the change in the designation of designs will bring it into line with the current EU trade mark designation.
- Unification of unregistered designs in the EU. The current wording of the Directive leaves Member States free to provide national protection also to unregistered designs. The reform put forward by the European Commission proposes to abolish such authorisation for Member States and limits national design protection to the registered form of protection only. The purpose of the proposed change is to harmonise the conditions for an unregistered design provided in the territory of EU Member States by an already unregistered Community design. From the European Commission’s point of view, parallel (potentially different) protection of unregistered designs is not necessary.
- Lower fees for the first years of registration. In order to increase the attractiveness of designs, the proposal submitted by the European Commission includes a reduction of fees for the registration of a design and the first renewal of a design after the first 5 years of registration.
- A new symbol for the protection of a registered design. The proposals to update the Regulation and the Directive introduce a new symbol “Ⓓ”, similar to the “®” sign used for trademarks, to provide designers and entrepreneurs with a new tool to emphasize the attractiveness of their products. The new design registration symbol is also intended to increase the protection of individual designs, as its placement on the product already provides clear information to competitors about the registration of the design.
- Simplifying registration procedure. The new legislation is also intended to simplify the design registration procedure, both at EU and national level. Now, an applicant could include multiple designs in a single application, regardless of whether they are classified in the same product class according to the Locarno Classification. The proposed change brings about a simplification compared to the current legislation, which allows multiple designs to be included in a single application only if they are included in the same class. In addition to the possibility of including multiple designs in a single application, the reform also brings about changes related to the development of new technologies and innovations, for example by allowing the submission of the representation of the design, both in static or dynamic form, including the submission of videos or other means of computer imaging.
- Clearer rules for the scope of design protection. The updated and more detailed definitions of the notions “product” and “design” are also intended to help clarify and extend the current definitions of “product” and “design”. The extension of the notion “product” to also include digital products responds to technological advances and provides greater legal certainty and transparency in relation to the eligible subject matter of design protection.
- Repair and spare parts clause. In order to create a single market in product repair spare parts, the proposal to amend the Directive includes a “repair clause”. Under such clause, Member States should refuse to provide protection to a design which forms part of a complex product and which is used to repair such a complex product so as to restore its original appearance. The “repair” clause would thus allow identical reproduction of the protected parts of complex products for the purpose of their further repair.
The above is only a summary of some of the changes that the design protection reform in the European Union may entail. The design protection reform proposals will be submitted to the European Parliament and the Council, which will decide on their adoption under the ordinary legislative procedure. Once the proposals are adopted, EU Member States will have to transpose the new rules of the Directive into their national legislation. We will continue to monitor further developments in the proposal for changes in the design legislation and will keep our clients informed of significant developments within the legislative process in due course.
 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs