The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
Design Protection in Europe: Big Changes Are Ahead
For over 20 years the EU Design Legislation has remained practically unaltered while the world has kept constantly changing, this also having a strong impact on designs.
In fact, as a result of the continuous technological developments, nowadays designs no longer look the way they used to, now being capable of being generated also by means of tools that did not exist in the past, which allow them to move, transform, be animated, appear/disappear, and even react to users and/or exist in the parallel world of virtual reality.
The need of legislatively acknowledging the existence of all these types of new designs was therefore one of the major impulses that led to the EU Design Legislation Reform that, after much debate and negotiation, was formally adopted by the EU Parliament on 14 March this year.
Other key factors driving the reform process were the need to modernise terminology (e.g. by deleting any reference to ‘Community’ and replacing it with ‘European Union’), to ensure legal certainty (i.e. to be able to attribute an indisputable date to a design), to streamline the design registration process at EU level and make it more cost effective, to align the EU design legislation to the already reformed EU trademark legislation and to harmonise design protection across all EU Member States.
The novelties and amendments affecting both the Design Regulation and the Design Directive will be introduced according to a step-by-step timeline and the whole reform process is expected to be completed in 2027.
As a first step, the final text of the Amending Regulation will likely be adopted and published and become effective in September/October 2024. The Amending Regulation will start applying four months after its publication, i.e. around February 2025.
The Design Directive concerning harmonisation in the EU Member States will presumably be adopted and published and become effective contemporarily with the Amending Regulation. However, the EUIPO and the EU Member States shall have a 36-month deadline to transpose the rules contained in the Directive into their own laws.
At a second stage, some provisions contained in the Amending Regulation and requiring to be further specified will finally be codified into implementing acts that will become applicable 18 months after the Amending Regulation comes into force.
At present, the provisions of both the Amending Regulation and the new Design Directive are still in the form of a ‘compromise text’, which was provisionally agreed between the EU Parliament and the EU Council and is currently undergoing linguistic revision, but no major modifications are expected in the final text, whereby we already can have a look at the main changes brought about by the revised legislation.
One of the core issues faced by EU legislators has certainly been the revision of the definitions of ‘design’ and ‘product’, which have been amended to take into account that, as mentioned above, “movement, transition or any other sort of animation” of those features determining the appearance of the whole or part of a product can also be protected as designs, and that such product “is embodied in a physical object or materialises in a non-physical form”.
Also, it has been added that for the features of the appearance of a registered EU design to obtain protection they must be “shown visibly in the application for registration”. Thus, for example, if a design is generated by devices such as projectors and the like, the application for registration should specify that the design disappears when the device that generates it is switched off.
The new provisions also introduce a) the possibility for design holders to prohibit the abuse of 3D printing technologies enabling the making of copies of the design, and b) the possibility of seizing counterfeit goods of design-protected originals, thus preventing circulation of counterfeits through the EU territory.
In addition, both the Amending Regulation and the Directive contain a permanent so-called ‘repair clause’ (or ‘spare parts clause’) according to which parts of complex products used for repairing such complex products solely with the aim of restoring the original appearance thereof cannot be protected as EU designs.
Even if some limitations to this clause have been introduced (e.g. it applies only to form-dependent spare parts, there is an obligation for manufacturers and sellers to inform their customers about the existence of original commercial parts, and to make sure that consumers will not use the spare parts for purposes other than the intended use, etc.), this is certainly an important step forward in guaranteeing a free market of spare parts so that consumers are allowed to choose freely among competing products.
Another key point of both the Amending Regulation and the Directive is that for an application for registration to obtain a filing date it must contain a “sufficiently clear representation of the design”, but the notion of clarity still needs to be – forgive the pun – clarified, and the details of how the design must be represented are still to be laid down in the second-stage provisions.
The filing procedure, too, has undergone remarkable changes, including the fact that EU design applications can no longer be filed at national offices acting as a go-between with the EUIPO, but they must be submitted directly to the EUIPO.
Another aspect aiming especially at facilitating individual designers or SMEs is that unity of class has been abolished, hence allowing designs belonging to different Locarno classes to be included in a single application.
On the other part, however, the number of designs that can be included in a single application has been capped to 50.
Regarding fees, the application fee of EUR 350 has remained unchanged, whereas the fee for each additional design has become EUR 125 both from the 2nd to the 10th design and from the 11th design onwards.
Other fees have been reduced (invalidity, appeal), deleted (transfer, inspection), increased (renewal), or introduced anew (continuation of proceedings, alteration).
Also, the renewal regime of designs has been modified, and once the reform becomes effective the renewal of the design will be due on the exact anniversary date of the original filing and no longer within the end of the anniversary month of filing.
Concerning design invalidity, new provisions have been introduced, including a fast-track path for examining requests for declaration of invalidity. However, the structure of the new invalidity procedure still has to be defined.
Furthermore, the legislations of EUIPO and the EU Member States will have to be harmonised and aligned not only in respect of invalidity, but also as far as filing date and filing formalities are concerned.
The above is only an overview of some of the provisions that will become effective in a near future, and the revision is so vast and far-reaching that it cannot be dealt with all at once.
Therefore, in this newsletter we will deal separately in more detail with the various changes as they become effective. Stay tuned!