Following the publication of the New EU Industrial Strategy in March 2020, the European Commission has published a new Action Plan on Intellectual Property (IP), alongside proposals for modernising the EU design system and expanding the geographical indication (GI) system.

These ambitious proposals promise a number of regulatory changes in the IP sphere in the coming years. We discuss the key elements of the proposals below.

The Commission promises action

On 25 November 2020 the European Commission published its Action Plan on IP. The document sets out extensive proposals on improving the protection of IP, boosting the uptake of IP by SMEs, facilitating the sharing of IP, improving IP enforcement and promoting a global level playing field in the EU. It also champions the need to address the technological revolution.

Among the items being considered in the plan are:

• Modernising the EU design system (see below), strengthening and expanding the geographical indication (GI) system (see below), reviewing the Database directive and clarifying the use of the Trade Secrets directive.
• Clarifying and upgrading the rules governing responsibilities of online platforms as regards illegal content through the Digital Services Act (the DSA).
• A number of proposals to boost the uptake of IP by SMEs including facilitating the sharing of IP in times of crisis.
• Various initiatives to fight counterfeiting and piracy, including strengthening the powers of various authorities.
• Considering the impact of new technologies on the IP system.

The elements of the Plan will be fleshed out in the coming year. Already, the Commission has started to indicate what this might mean for designs and GIs and has published a first draft of the DSA. It bodes for a busy period for those in the IP sphere.

What's next for EU Design law?

The EU has completed its evaluation of the EU designs system. While it concludes that the system is broadly fit for purpose, it has identified a number of areas in need of modernisation. A proposal to modernise the system will follow. Key findings of the evaluation are:

• There is uncertainty about the way current design law interacts with the law on trade marks and copyright.
• The market for spare parts is fragmented due to partial harmonisation.
• Design legislation needs to be adapted to support the twin digital and green transitions underway – eg there are uncertainties regarding the possibility to protect graphical user interfaces and icons as designs as well as dynamic views of designs, and on the scope of protection for 3D printed designs.
• The system needs to become substantially more accessible and efficient for industries, SMEs and individual designers.
• In particular, there is lack of clarity and robustness on certain key elements of design protection (subject matter, scope of rights and limitations), outdated or overly complicated procedures, and inappropriate fee levels and fee structures.

Expanding the GI system to handicraft and other products

A GI is a sign used to indicate that a product has a specific geographical origin and possesses a certain reputation or qualities due to that place of origin. Protected GIs can only be used by those from the area which manufacture the product in question in a prescribed way. Champagne is a well-known example of a GI.

For several years, the EU has been considering extending GI protection to non-agricultural products. Currently such protection is only provided for agricultural products and foodstuffs, wines, and spirit drinks. In line with this, the Commission has recently published a proposal for a regulation on GIs for non-agricultural products. The proposal is open for consultation for four weeks – until 28 December 2020 – with adoption of a new regulation planned for the fourth quarter of 2021. 

The main policy options under consideration at this stage are: 

• Do nothing.
• Voluntary measures to establish protection for non-agricultural products at national EU Member State level.
• Harmonise national protection systems for GIs for non-agricultural products.
• Create a single protection system for non-agricultural products based on a sui generis IP right at EU level.
• Reform the trade mark system so as to accommodate producers’ need to market their products as guaranteeing a certain quality linked to their geographical origin – eg on the basis of certification or collective trademarks.

The stated aims of the new regulation are many-fold including to improve competitiveness and curb unfair competition, retain unique skills, preserve economic activities and skilled jobs in often less-developed rural regions, and provide reliable information on authentic geographically linked products for consumers.

Find out more

Please get in touch with your usual Taylor Wessing contact if you would like to comment on the proposal. We will be writing on all the above initiatives in more detail in the new year.