Over the last years the world of design has rapidly changed due to technical advancements and especially the internet.
As the current legislation on design protection in the EU is more than 20 years old, the technical advancements have led to gaping holes in the legislation. Practitioners and scholars alike have vocally called for updates to the legislation to meet the increased demands from designers and manufacturers of goods in the digital age.
Their voices have been heard and the EU Commission has proposed amendments to both the EU Directive on Design protection which sets the limits for the national legislation in the Member States, and to the Regulation on Design Protection in the EU which regulates the Registered EU Designs.
The below considerations are naturally only proposed legislation but will most likely be adopted as it is or with only minor amendments within a foreseeable future when the European Parliament and Council has finished their discussions.
Nevertheless, lowered costs, more effective application proceedings, wider scope of definitions to accommodate technological advancements, further harmonization, and a new tool to stop counterfeit goods in transit are all in the interest of rights holders across the EU. Further, harmonization and specification of terminology, codification on the topic of spare parts and the addition of an exemption regarding parody is well in the interest of consumers.
- New definitions
The new proposed legislation contains new and updated definitions of the term’s “design” and “product” to accommodate the development of digital and technological advances.
The new definition of “design” widens the definition to include not only the lines, contours, colours, shape, texture, materials of the product itself and/or its decoration, but to also include the movement, transition, or any other sort of animation of those features.
The new definition of a “product” widens the definition from covering physical industrial or handicraft item other than computer program to also cover digital forms of designs, whether they are graphic works, logos, surface patterns or graphical user interfaces.
These amendments will allow rights holders a wider and more predictable protection of their design rights in the future, also granting protection for the design rights against 3D-printing or if the design is used in the Meta-verse or as a Non-Fungible Token (NFT).
- Requirement of registration
To ensure a wider harmonization between the national systems of the Member States and the EU design registrations, the Commission has proposed that Member State shall no longer allow for the protection of unregistered rights through their national legislative systems.
However, this is not to remove the potential protection of an unregistered design, as there is still the possibility of claiming the protection as an unregistered EU design under the Regulation.
This amendment is solely to avoid national differences in the interpretation of the term “unregistered design”, and instead harmonize the term across the EU.
In practice this will most likely make it easier for rights holders to enforce their unregistered EU designs, as there will be no need for discussing specific national rules in the different Member Status when enforcing one’s unregistered rights.
- Lowered costs and simpler application proceedings
The EUIPO will lower its costs for the application of an EU registration, while also updating their application procedures, allowing for simpler and less costly applications.
One such updates on the application process is that the EUIPO will allow rights holders to also use 3D digital representations and video files when applying for registration.
Furthermore, under the current legislation, right holders must categorize their designs into different classifications (Locarno Classification) that indicate which type of products for which protection is sought, and only products within the same classification can be protected in the same application.
However, under the proposed new legislation the applicants will now be allowed to make so-called “multiple applications”. This essentially means that any two or more products can be applied for at the same time in the same application, despite the products being fully dissimilar and placed in different Locarno Classifications, which will save costs on the application proceedings.
- Goods in transit
The new legislation also adopts a well-known tool from trademark law to help rights holders enforce their design registrations.
According to the proposed legislation a right holder shall now be able to prevent counterfeit products from passing through the EU, even if the products are not meant to be put on the EU market, but merely passes through a Member State on its way from one non-EU-country to another.
This is a significant tool for rights holders to prevent the circulation of counterfeit products which has been sorely missed up until now.
- 3D printing
As there has been uncertainty as to whether making available the information needed to enable consumers to produce their own 3D printed versions of a design was covered by the current design legislation, the Commission has in their proposed new legislation decided upon this.
According to the proposed legislation, rights holders now have the right to prevent any third party from “creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product to be made”.
This provides opportunities for rights holders to prevent both producers and end-users of 3D printing designs from producing, distributing, or using their registered designs in any commercial capacity, including allowing others to produce 3D-printed copies of protected designs.
Another issue that the Commission has attempted to solve with their proposed legislation is that of whether rights holders are to accept their designs being used in satire and parody. The concept of parody has been discussed thoroughly within the field of copyright and trademark law in recent years, with the considerations of rights holder’s expectations to exclusively control the use of their designs on the one side and considerations on the public’s freedom of speech on the other side.
In the proposed legislation the Commission has proposed that using a registered design in “acts carried out for the purpose of comment, critique or parody” without the acceptance of the rights holder is allowed if the use is compatible with fair trade practices.
What “fair trade practices” means in practice is yet to be defined but will be subject to interpretation from the European Union Court of Justice in the years to come. Nevertheless, this proposed legislation opens for another exemption to the rights holders’ exclusive rights to their protected designs.
Design protection is under the current legislation granted only to designs that are visible. When it comes to component parts of complex products (such as machines of different sorts), case-law shows that a component part must be visible during normal use to be separately eligible for protection. However, for non-complex products, there has never been explicit legislation requiring the visibility of the product.
However, the Commission has solved this issue in the proposed legislation in which they state that “Protection shall be conferred for those features of appearance of a registered design which are shown visibly in the application for registration”.
The Commission has stated the following in this regard “While design features do not need to be visible at any particular time or in any particular situation in order to benefit from design protection, as an exception to this principle, protection should not be extended to those component parts which are not visible during normal use of a complex product”.
In practice this means that any product to be registered as a design must be visible, unless the product is a spare part as explained below, in which case it only has to be visible in its normal use.
This addition to the legislation merely codifies the existing case law and helps with the understanding of when a design can be protected through design registration and when it cannot.
- Spare parts
Currently there are only limited possibilities for achieving design protection through EU design registration for products that constitutes spare parts used for repairing of complex products such as cars or machines. The reason for this is to avoid producers of complex products from creating a monopoly regarding spare parts and thus preventing users from repairing their products without paying potentially large amounts for the spare parts that is only available from the producer of the original complex product.
Nonetheless, if a spare part is visible in its normal use as part of a complex product and the design of the product is not dictated purely by a technical function, while also being new and possessing individual character, it is possible to achieve registration for design protection of the spare part in the EU. This has been settled through temporary legislation and case-law.
Under the new proposed legislation, the situation will not change considerably. According to the proposed new legislation protection shall not be conferred on a design of a spare part if the appearance of the design is solely depended on the appearance of the complex product for which the design functions as a spare part.
Furthermore, it is stated in the preparatory works to the proposed legislation that the wording is only to cover the so-called “must match” spare parts, meaning parts that are created solely to fit specifically as spare parts.
Simply put, this proposed legislation means that the original producers of complex products must still accept a limitation to their exclusive rights to their designs of component parts of a complex product, as others are free to produce spare parts for the purpose of repairing the complex products. The exception to this being if the design of the spare part is new, possesses individual character, visible in normal use of the complex product and functions as a “must match” part.
This issue is controversial and has been debated heavily over the years, as it effectively deviates from the standard that any design produced that is new and possesses individual character is able to achieve registration and confer exclusive rights to the rights holder. It will therefore be interesting to see if the proposed wording of the legislation will change before the legislation is put into effect to meet the interests of manufacturers and producers of complex products.
Should you have any questions regarding the protection of your designs in the future, we are always available to assist.