The European Parliament has published proposals for a new Directive on the legal protection of designs and for a new Regulation on Community designs, which aim to make design registrations quicker, cheaper and more predictable and to adapt EU design law to make it ‘fit for the digital age’. This is a provisional agreement which the Council of the EU and the European Parliament have reached, which now needs to be endorsed and formally adopted by both institutions.
The key changes are summarised below:
Update of terminology
One of the key changes applies to the terminology used for the name of the design rights themselves. Specifically, under the new legislation rights will be known as Registered EU Designs (REUDs) rather than Registered Community Designs (RCDs).
This follows a similar change to the name of ‘community trade marks’ which are now known as European trade marks.
Update of definitions
The updated legislation also proposes to update the definition of ‘design’ and ‘product’ with a view to adapt EU design law to the digital world, as indicated below:
Article 2(3) CDR – ‘design’ means the appearance of the whole or part of a product resulting from the features, in particular, the lines, contours, colours, shape, texture, materials of the product itself and/or its decoration, including the movement, transition or any other sort of animation of those features
This addition to the definition of design applies to both registered and unregistered European designs.
Article 2(4) CDR – ‘product’ means any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a digital form
The change of definition of product intends to make clear that the appearance of a digital ‘product’ falls under the definition of a design.
Multiple applications
Presently, at the EU Intellectual Property Office (EU IPO) multiple designs can be filed in a single application – provided that all of the designs included in the multiple application are products of the same Locarno class.
Under the new proposal, the ‘unity of class’ requirement is abolished. This will enable the filing of multiple designs which belong to different Locarno classes, ultimately reducing the official fees due if protection is desired for many products which belong to different product classes.
Fees
The proposal suggests having lower fees in the first few years of the European registered designs ‘life’, with the aim of making European designs more attractive to designers and small medium enterprises.
However, the proposal also suggests a scaled increase in fees for the second, third and fourth renewal periods which would result in the final renewal fee being €560 (in contrast to the current fourth year renewal fee of €180). This objective of the proposed increase is to ensure that only designs that are used in the market remain on the register.
Repair clause
Currently, community designs are subject to a transitional repair clause which states that ‘protection as a Community design shall not exist for a design which constitutes a component part of a complex product… for the purpose of the repair of that complex product so as to restore its original appearance’. Thus, third parties can reproduce ‘spare parts’ of a design to repair a complex product without risk of infringement.
Under the new proposal, this transitional repair clause is converted into a permanent provision and will be included as a defence to infringement.
The proposal also suggests that to ensure that consumers are not misled and are able to make an informed decision, the repair clause will not be able to be invoked by a manufacturer or seller of a component part who has failed to inform consumers of the commercial origin (i.e., the producer) of the product to be used for the purpose of repair of the complex product.
Scope of protection
The proposal suggests that ‘the creation, downloading, copying and making available of any medium or software recording the design for the purpose of reproducing a product that infringes the design’ will be added as an act of infringement, broadening the scope of protection of a European registered design by including 3D printing in the acts that can be prohibited.
Additionally, the proposal states that a provision to enable holders of registered European designs to prevent entry of infringing products, in the course of trade, into the European union (including when such products are not intended to be placed on the market in the EU). This mirrors existing provisions for European trade marks.
Defences to infringement
The proposal suggests the introduction of two defences to infringement to the new Regulation. Specifically:
- Referential use in the context of comparative advertising
- Use for the purpose of comment, critique or parody
Design notice
The proposal includes the introduction of a new design notice, where the holder of a registered European design may 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 (similar to the registered trade mark symbol). This symbol may also be accompanied by the registration number of the design or hyperlinked to the entry of the design in the register.
Certified copies and registration certificates
Currently, it is possible to obtain both electronic copies and paper copies (with the payment of a fee) of certified copies and registration certificates. However, the proposal suggests a shift to electronic copies only.
It is anticipated that the proposed amended European design regulation and directive will be adopted and enter into force in the first half of 2024, providing a modernised and simplified European design system. The attorneys at Secerna LLP have in-depth experience of filing and prosecuting registered design applications in Europe, as well as various overseas jurisdiction, and can assist you with any design related matters.