Often misunderstood and definitely underused, EU design law is about to receive a long-awaited facelift.
On 10 October 2024, the Council finally approved the long-awaited update of the EU design rules, also called the Design Package.
The Directive (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs and the Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002have been published today (18 November 2024) in the EU Official Gazette.
You will find below what you need to know about this new legal framework.
1. Existing EU legal framework for Design protection
The legal framework for designs remained practically unchanged since it was adopted 20 years ago. It is composed of:
- the Design Directive (Dir. 98/71/EC) which first harmonized the existing national laws of EU Member States on design protection ;
- the Community Design Regulation (Council Regulation (EC) No 6/2002) which then created a unified, stand-alone system for obtaining a “registered Community Design”, a unitary right given uniform protection with uniform effect throughout the entire EU territory.
Design rights protect the appearance of a product or part of a product such as, for example, its lines, contours, colors, shape, texture or materials of the product itself.
Design protection guarantees the exclusive right to use a design, which includes making, offering, putting on the market, importing, exporting or using the product in which the design is incorporated or to which it is applied.
2. Commission proposals
On 28 November 2022, the European Commission published two package proposals to revise both the Design Directive and the Community Design Regulation.
The revision aims to ensure that design protection is (i) fit for purpose in the digital age and (ii) that it is more accessible and efficient by simplifying registering procedures and reducing administrative burden.
- Modernization of existing provisions
These modernizations were made to clarify things in terms of scope and limitations in order to make them fit for the digital age and for future technological developments (such as NFTs, 3D printing and the metaverse).
For example, the following definitions have been extended and broaden the scope of protection :
- “Design” will also extend to the movement, transition, or any other sort of animation of the features of the appearance of a product;
- “Product” will also include such things as digital products and the spatial arrangement of interior environments. It will also include animation, maps and fonts.
- Simplification of the process of registering designs
There will, for example, be a simplification of the requirements to represent the design, so that even if, at the date of the request, some documents are missing, the design can still be registered on that date, provided that the representation of the design is clear enough.
- Addition of permissible uses of a design
The new legislations consider now “referential use” and “critique and parody” as permissible uses of a design and therefore enshrined the existing case law (see the “Deckmyn” case of the ECJ (C-201/13) on the parody exception in copyrights law and the “Simple Living” case of the Court of the Hague (4 May 20211 NO.KG ZA 11-294) concerning the incorporation of a Community design-protected pattern owned by Louis Vuitton on a painting) into legislative instruments.
3. Main elements of the new Design package
The EU Parliament and the Council reached a provisional agreement on the Design package on 5 December 2023.
On 14 March 2024, the EU Parliament formally endorsed both the directive and the regulation.
In addition to the points identified above in the commission's proposals, the main takeaways of the new Design package are the following :
- Repair clause
Article 19 of the new Directive and Article 1.17 of the new Regulation (making the transitional reparation clause currently contained in Regulation (EC) 6/2002 a permanent provision) clarify the condition of the “repair clause”. Under this clause, the design of components of complex products will not be protected by EU design if they are used for repair just to restore the original appearance of the product.
This will allow the reproduction of original designs for repair purposes of complex products (such as cars) and will ensure competition in the spare parts market.
This clause can be used as a defense against infringement claims only if consumers are duly informed of the origin of the product to be used for repairing the complex product.
- Fee and office services
Registered EU design are protected for five years and this protection can be renewed by five-year periods for a maximum total length of 25 years. The registration and renewal fees have been adjusted and optimized to motivate individual designers and SMEs to protect their designs.
For example, the headline registration fee will be of 350 EUR and fees for the renewal of design protection will amount to 150 EUR per design for the first renewal to 700 EUR for the fourth renewal.
National offices will have the duty to warn designers when the expiry date of their design rights is approaching.
- Cultural heritage
The new Design package forbids that cultural heritage elements of national interest (e.g. the traditional costume of a region) could be protected as private designs. To frame the limits of this disposition, the co-legislators agreed on using the UNESCO definition of ‘cultural heritage’.
4. Next steps
Both regulation and directive will enter into force on the twentieth day following that of their publication in the Official Journal, namely on 8 December 2024.
Member states will have a transitional period of 36 months (by 9 December 2027) to take the necessary measures to transpose the Directive for the legal protection of designs.
Concerning the repair clause, Article 19.4 of the Directive lays down a harmonised transitional period of 8 years after the entry into force of the Directive where on 8 December 2024, the national law of a Member State provides protection for designs to a design that constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used for the sole purpose of the repair of that complex product so as to restore its original appearance.
The Regulation on EU designs will be applicable throughout the EU once it comes into force. It will apply from 1st May 2025.
Consequently, it is important for your company to take these changes into consideration and perhaps consider registering (new) designs.
