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Grace Period in Design Rights: the General Court of the European Union Clarifies the Issue
The grace period in design law is a fundamental principle that allows designers to test their products on the market before proceeding to official registration. Recently, the General Court of the European Union provided important clarifications on the application of this principle, in particular with regard to the relationship between the disclosed design and the subsequently registered one.
The Regulatory Framework
Article 7(2) of Regulation (EC) No. 6/2002 stipulates that the disclosure of a design by its creator or successors in title during the 12 months preceding the application for registration shall not affect the assessment of novelty and individual character of the design. This mechanism allows design creators to verify the commercial success of their designs before investing in registration thereof.
The Court’s Decision and Its Implications
In Case T-66/24, the General Court dealt with a registered community design owned by Liquidleds Lighting Corp. (defendant) for LED light bulbs, which was challenged for lack of novelty and individual character by Lidl Vertriebs GmbH & Co. KG (appellant). The appellant maintained that the earlier design, disclosed prior to its registration, should be taken into account when assessing the validity of the registered design.
The Court clarified that:
- absolute identity between the disclosed design and the registered design is not required for the grace period to apply;
- changes made to the design during the grace period are lawful as long as the final design retains the same overall impression as the initially disclosed design;
- the grace period protects innovation by allowing designers to adapt their products according to market feedback without losing legal protection.
Allocation of the Burden of Proof
Another relevant aspect of the judgment concerns the allocation of the burden of proof. In this regard, the Court ruled that:
- the design owner must prove that the disclosure falls within the grace period (i.e., that the exception set forth in the aforementioned Article 7(2) of Regulation (EC) No. 6/2002 applies);
- the invalidity claimant may contest the application of the above provision, but does not have the burden to rebut such application.
Conclusions
This decision represents a significant step in the protection of designers' rights, confirming that the grace period is not limited to identical designs, but also extends to designs that undergo modifications as long as they maintain the same overall impression. Furthermore, the ruling strengthens the possibility for designers to test their products on the market without compromising legal protection.
The Court's approach strikes a balance between the need to protect innovation and transparency in the Community design system, offering greater legal certainty to professionals in the design sector.
It is also noted that the Court's interpretation is entirely in line with the forthcoming new EU Design Regulation (2024/2822) - part of which will enter into force on 1 May 2025 - which explicitly addresses the self-disclosure of the earlier design that ‘is identical or does not differ in its overall impression from the design for which protection is claimed under a registered EU design’. This regulatory consistency helps to ensure a stable and uniform legal framework, which will remain relevant even when the new regulation comes into force.