New EU design package: a reminder of the first phase of changes

First phase of changes to EU-wide designs regime comes into force on 1 May 2025.

What has happened? 

• The EU has adopted a new Regulation and Directive to modernise EU legislation on designs. (The Regulation governs the law for EU-wide designs whereas the Directive governs the law for national member state designs.) 

• Here we cover the first phase of changes to be introduced under the new Regulation which apply from 1 May 2025.

• Key changes include: non-static designs and designs embodied in non-physical products are now expressly protectable; 3D printing now constitutes an act of infringement; the repair clause has been made permanent but narrowed; referential use, comment, critique and parody have been added as defences; some fees have been changed (mainly reduced); and a single application (for multiple designs) can now cover products in different Locarno classes (giving scope for a reduction in overall fees).

• While all these changes take effect from 1 May 2025, in practice, applications to register non-static designs and designs embodied in non-physical products will still be difficult until the design representation regime changes as part of Phase II on 1 July 2026. At that point, the seven-view limit will be abolished and it should be possible to file JPEGs, MP4s and other files depicting designs (as for motion EU trade marks).

The Phase I changes in detail

The key changes are listed below. They apply to Registered EU Designs and/or Unregistered EU Designs (as indicated).

Substantive changes

• Terminology. Registered Community Designs (RCDs) will now be known as Registered EU Designs (REUDs) and Unregistered Community Designs (UCDs) will be known as Unregistered EU Designs (UEUDs). This 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 against technological advancements and provide more legal certainty in relation to the types of design that are protectable. 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. While it has long been possible to register non-static designs at EU level, in practice, registration has been difficult as the application for registration could only contain a maximum of seven depictions of the design in the form of static drawings. This will change as part of Phase II – see below. When this change comes into force, we should see more applications to register non-static designs. Meanwhile, it will now be clearer that non-static designs are also potentially protectable as Unregistered EU Designs. For the implications of this for particular sectors, see our article here.

• AI generated designs. While the definition of design has been clarified, there is no provision or clarification on whether AI-generated designs can be protected.

• 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 non physical form". This means that digital and other designs (such as light installations) are potentially protectable. The examples of what can constitute a product have also been expanded to include the spatial arrangement of items intended to form an interior or exterior environment (such as a shop layout). Likewise, graphic works, symbols, logos, surface patterns and graphical user interfaces are now added as other examples of products. These changes apply to REUDs and UEUDs. Again, we should see more applications to register such designs when the new Phase II representation regime comes into force – see below.

• Design representation regime. It will be necessary to wait for the new design representation regime to come into place (Phase II) on 1 July 2026 before taking full advantage of the new definitions of design and product. At that point, the seven-view limit will be abolished (with the exact number of views allowed to be set out in secondary legislation). The EUIPO is currently considering what technical standards (eg file formats, sizes etc) will apply. It is likely that the new regime will require some level of coordination between the national offices so that the Member States will be able to accept similar applications when the new Design Directive applies.

• Scope of protection. The scope of protection for an REUD has been broadened by including 3D printing in the activities that can be prohibited. Creating, downloading, copying and sharing or distributing to others any medium or software which records the design for this purpose are all prohibited. In addition, REUD holders will be able to prevent counterfeit products transiting through EU territory (mirroring existing provisions for trade marks). 

• Defences. Referential use, comment, critique and parody have been added as defences to mirror similar provisions for copyright. This change applies to REUDs and UEUDs.

• Spare parts/the repair clause. The old Designs Regulation contained a transitional repair clause. The revised Regulation makes the clause permanent (with some amendments/narrowing to reflect the case law of the CJEU in Acacia v Audi and Porsche). The effect of the new repair clause is to make registered and unregistered design rights unenforceable where the design of the component part of a complex product is applied or incorporated into an item used for repairing a complex product to restore its original appearance. The development will be welcome news for those in the spare parts market but will limit the rights of design owners and original manufacturers. For more on this, see our article here.

• Possible clarification on disclosure requirements. For some years, it has been unclear whether UEUD arises if the design is first disclosed outside of the EU. This is important because a disclosure outside of the EU will (unless very obscure) usually destroy the novelty of a design. If UEUD does not arise where a design is first disclosed outside of the EU (and that first disclosure destroys the novelty of the design such that no UEUD protection can subsequently be obtained), then the rights of designers in the EU would be severely limited. Some commentators argue that changes introduced by the revised Regulation now make clear that disclosures anywhere in the world potentially count. Our view is that only a decision of the ECJ will ultimately decide this issue. For more on this, see our article here.

Procedural changes

• 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. This does not mean that only features that are visible during normal use of a product are protectable (except in the case of component parts of complex products which must remain visible during normal use). Rather, the new requirement is about certainty of what is claimed in the application for registration. 

• 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 for up to 50 designs). This will lead to overall lower filing fees where more than one design is to be protected. The classification will not affect the scope of protection and examiners will be able to help applicants reclassify designs. 

• Fees. EU design fees have been set out directly in the revised Regulation (as opposed to any implementing regulation). Fees for the inclusion of additional designs in a single application have been reduced. However, renewal fees have bene increased.

• Filing date. The filing date of the REUD is secured only when the application fee is paid. If there are irregularities with the payment, the EUIPO will set a one-month deadline for the applicant to pay the fee. In case of late payment, the filing date will be the date of the payment of the application fee.

• Deferment. Where there is a request to defer publication of the application (eg for reasons of secrecy), the deferment fee must be paid at the moment of filing. (Publication fees have been abolished so it will not be possible to defer the publication of the design simply by not paying the publication fee.) If, for any reason, a party wishes to avoid publication (and they have not applied for deferment), they will have to withdraw the application. 

• Renewals. The revised Regulation will change the calculation of renewal periods. The EUIPO has published guidance on design renewals following the EU design reform. For more on the new renewal periods and fees, see our article here.

• 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. 

What's the timing for the changes?

• The Phase I changes (ie those discussed above) apply from 1 May 2025.
• The phase II changes will apply from 1 July 2026. They will bring changes to the design representation regime, the invalidation procedure (including the introduction of a new fast track procedure) and the appeal regime. More here.

• Member States have until 9 December 2027 to transpose the recast Directive into their national laws. Changes are similar to those under the Regulation – more here. 

• UK and EU law on designs will (partly) diverge once the reforms to EU law are in place. However, the UK recently issued a call for evidence on the principles which should shape the future of the UK designs system, ahead of a formal consultation later in 2025. Questions include whether the definition of a design meets the needs of designers and consumers in the digital age. Comments must be submitted by 1 April 2025. More here.