Major changes to designs law in the EU: proposals for a new Designs Regulation and Directive

In-depth analysis

The EU Commission recently published proposals to modernise EU legislation on designs at EU-wide and national member state level. The legal framework for designs has remained practically unchanged since it was adopted 20 years ago so there is scope for modernisation particularly to make the system more accessible and fit for purpose in the digital age.

What has happened?

The EU Commission has recently published proposals to modernise the designs system at EU-wide and national level in the form of a revised Designs Regulation and Directive.
The changes range from cosmetic (such as renaming Registered and Unregistered Community Designs as Registered and Unregistered EU Designs) to substantive (such as adding referential use and critique and parody as permissible uses of a design).
Other key changes include expansion of the definition of a design (to include the movement, transition or any other sort of animation of the features of the appearance of a product) and the definition of a product (to include such things as digital products and the spatial arrangement of interior environments).
3D printing is also specifically included as an activity that can be prohibited and the so-called repair clause will be made permanent to encourage increased competition in the spare parts market.
Interestingly, the proposals will remove the ability of member states to provide for unregistered design protection on a national basis. It will mean that unregistered design protection is only available on an EU-wide basis. Given that no member states currently provide for such protection at national level, the practical impact of this change such be minimal.
Of more practical impact will be the requirement for member states to provide for administrative invalidity actions for registered designs. Currently, a number of member states only allow such actions to be brought in the courts, which is expensive and time-consuming. This follows similar changes for trade marks.
The UK government also recently consulted on changes to the designs legislation in the UK (see article here). The changes proposed in the UK are arguably less wide-ranging than those proposed by the EU. Assuming either or both proposals are implemented, we will see the start of divergence of UK and EU design laws.

Want to know more?

The proposals for a new Regulation include the following provisions. They will apply to Registered EU Designs and/or Unregistered EU Designs (as appropriate).

Terminology. Registered Community Designs (RCDs) will now be known as Registered EU Designs (REUDs) and Unregistered Community Designs (UCDs) as Unregistered EU Designs (UEUDs). This reflects the fact that the words "European Community" are now obsolete. It follows a similar change many years ago to the name of Community trade marks (CTMs) – now EU trade marks (EUTMs).
Definition of Design. The definition of a design is updated to future proof the legislation for technological advancements and provide more legal certainty in relation to eligible subject matter not embodied in physical products. The definition of a design will now include "the movement, transition or any other sort of animation of" the features of the appearance of the whole or part of a product. This change applies to REUDs and UEUDs.
Definition of product. The definition of product is also expanded to include any industrial or handicraft item other than a computer program "regardless of whether it is embodied in a physical object or materialises in a digital form". Again, this is intended to make clear that the appearance of digital products is covered. The examples of what can constitute a product will also been expanded to include the spatial arrangement of items to form, in particular, an interior environment. This reflects the growing desire for items such as the designs of the interiors of stores to be able to benefit from design protection and the growing protection of such layouts in other countries (eg Decathlon's recent success in China in preventing third parties from using layouts similar to its stores under the law of unfair competition). Graphic works, logos, surface patterns and graphical user interfaces are now added as other examples of products. These changes apply to REUDs and UEUDs.
Visibility requirement. Given the expanded definitions of design and product, the proposal clarifies that design protection is conferred for REUDs only for those features of appearance that are shown visibly in the application for registration.
Design representation. The Commission will specify the standards of design representation required in an application for an REUD with subsequent implementing acts. However, the proposal abolishes the option of filing a specimen and clarifies that the representation of the REUD needs to clearly identify all the details of the design for which protection is sought and be suitable for reproduction and publication.
Unity of class abolished. It will be possible to file multiple designs in the same REUD application without being limited to products of the same Locarno Class (thus allowing a bulk discount).
Scope of protection. The scope of protection for an REUD has been broadened by including 3D printing in the activities that can be prohibited. In addition, REUD holders will be able to prevent counterfeit products transiting through EU territory (mirroring existing provisions for trade marks).
Defences. The Commission is proposing to complement the list of permissible uses by adding referential use and critique and parody. This change applies to REUDs and UEUDs.
Spare parts. The transitional repair clause in Article 110 of the existing Regulation is converted into a permanent provision but, in view of the case law of the CJEU in Acacia v Audi and Porsche, it is only applicable if the appearance of the component part depends on the appearance of the complex product. The clause can be used as a defence to infringement claims only if this condition is met and if consumers are informed of the origin of the component part. This change applies to REUDs and UEUDs. It is intended to increase competition in the spare parts market, with only 12 Member States currently allowing free competition in this area.
Design notice. The proposal introduces a new design notice. Rights holders can inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter D enclosed within a circle.
Fees. The existing Fees Regulation will be repealed, and the fees will be set out in the new Regulation in the form of an annex. It is proposed to reduce the level of the application fee and to simplify the schedule of fees to make design protection more affordable.

The proposals for a new Directive include the above plus the following. They apply to member state national designs.

Unregistered designs. The proposal will remove the discretion that permits Member States to provide unregistered design protection at national member state level. With the new Directive, design protection will only arise through registration at national member state level. Unregistered design protection will still be available on a pan-EU basis (in the form of the Unregistered EU Design). Given that no member state currently provides for unregistered design protection at national level, the impact of this should be minimal. The Commission states that this change will remove the possibility of divergence in laws if any member state were to introduce a new national unregistered design.
Ownership presumption. New provisions are included on the rights conferred to the right holder, including a presumption of ownership.
Prior use. A prior use defence is introduced in line with similar provisions contained in the current design Regulation. The Commission clarifies that this defence against infringement will protect those who invested in good faith in a product design before the priority date of a registered design and therefore have a legitimate interest in marketing the products even if their appearance falls within the scope of protection of the registered design.
Mandatory invalidity provisions. It is proposed to convert optional grounds for invalidity of national registered designs into mandatory provisions to increase predictability and consistency with the EU design system. The grounds for non-registrability should also be set out in national legislation in an exhaustive manner, ensuring that the procedure for obtaining a registered design represents the minimum cost and difficulty to applicants.
Repair clause. The repair clause mirrors the proposal contained in the Regulation, but the new Directive includes a transitional period of 10 years to safeguard the interests of existing design rights holders if the member state allows design protection for spare parts when the new Directive comes into force.
Deferment of publication. The proposal provides the option for applicants for national registered designs to request deferment of the publication of a design application for a period of 30 months from the date of filing the application. This can be a useful process for keeping new designs confidential.
Mandatory administrative invalidity proceedings. Member states will be forced to provide for administrative invalidity proceedings. This is because, in some Member States, the validity of a registered design can be contested only in court proceedings which are cumbersome and expensive. The new system should offer an efficient and expeditious procedure handled by the national IP offices. This mirrors the requirement for trade marks.