After several years of discussion, the EU's proposed design law reform package has been approved by the EU Council, the final step in the legislative process before becoming law. The newly adopted EU Design Regulation and Directive aims to simplify, harmonise and modernise the current system of design protection in the EU, currently made up of a patchwork of national systems and EU legislation which is more than 20 years old.
Once published in the Official Journal, the Regulation will enter into force 20 days later and will apply four months after that. Member States will have 36 months to implement the provisions of the Directive (we will update this article once the timelines are finalised).
This article looks at what the reforms mean for designers and what changes they can expect to be introduced to the EU system for design protection in the coming months. Until now, the EU and UK design regimes have been largely aligned following Brexit – following the introduction of the EU's new design package we will now see some areas of divergence, which is highlighted below. In the meantime, it is expected that the UKIPO will launch further consultations in relation to reform of the UK's design law regime shortly.
Application and registration
One of the key aims of the EU's new design package is to ensure greater efficiency and accessibility for applicants seeking to register their designs. Designers can expect the following changes to the EU application and registration process:
- European Union Design – The current terminology of Registered Community Design (RCD) and Unregistered Community Design (UCD) will be replaced with Registered European Union Design (REUD) and Unregistered European Union Design (UEUD). This follows the changes made when Community Trade Marks became EU Trade Marks (EUTMs) in 2016.
- Multiple designs in one REUD application – The Regulation will make it possible to combine multiple designs within the same REUD application (to a maximum of 50), regardless of whether they fall under the same Locarno Class (i.e., abolishing the unity of class approach). This will effectively allow for a 'bulk discount' on registration fees, as designers will be able to combine multiple designs covering different products in the same application. It is expected this will also result in a higher number of design registrations than previously.
- Fees – Registration fees for EU designs are set out in Annex 1 of the Regulation. The staggered renewal costs for each renewal period now incorporate a higher increase for the third and fourth renewal periods, which some industry stakeholders have criticised. However, this policy is to ensure that only those REUDs that are actually used in the market remain on the register.
- Deferment of publication – Once implemented by Member States, the Directive provides the option for applicants to defer publication of their design application for a period of up to 30 months, meaning the same deferment rules will apply across the EU (these rules had previously been applied differently between Member States).
Scope of protection
Designers can expect the following changes to the scope of design protection in the EU:
- Definitions – The definition of 'design' (for both REUDs and UEUDs) has been updated to clarify that it covers animated designs, such as 'the movement, transition or any other sort of animation of' the features of the appearance of the whole or part of a product. The statutory definition of 'product' to which a design is applied has also been expanded to include embodiments in both physical and non-physical form. Specific examples mentioned include graphical user interfaces and spatial arrangements of interiors and exteriors. Only those features which are visibly shown within the application for registration will be eligible for protection and therefore must be included.
- Design notice – As with registered trade marks, REUD owners will be able to inform the public that their design is registered by displaying the registration symbol of a letter D enclosed within a circle alongside a product in which the design is incorporated or to which it is applied (this may be accompanied by the design registration number or hyperlink to the entry in the Register). It will be interesting to see how much use of this is made in practice.
- Infringement – REUD/UEUD owners are conferred a new exclusive right in relation to 3D printing. REUD holders meanwhile also now have a right to prevent third parties transiting counterfeit products through the EU.
- Defences - One of the most interesting changes comprises new defences to infringement of both REUDs and UEUDs, including in relation to referential use in comparative advertising, comment, critique, and parody as defences to infringement (provided this is in line with fair trade practices). This is a substantial expansion to the existing defences available.
The Regulation also permanently introduces a 'repair clause' (which was previously only transitional), making REUDs and UEUDs unenforceable against spare parts used to repair and restore complex products to their original appearance. This reflects recent EU case law and has been the subject of significant policy debate notably within the automotive industry, perhaps unsurprising given the size of the spare parts market in Europe. A key caveat is that manufacturers or sellers of component parts must inform consumers about the commercial origin of the product to be used for repair, so that consumers can make an informed choice between competing products. Whilst they are not however required to guarantee that the component parts are ultimately used by end users for the sole purpose of repair, the recitals to the amended Regulation do mention a duty of diligence to ensure, including through contractual means, that downstream users do not intend to use component parts for purposes other than repair.
The Directive also includes a repair clause, though Member States that already provide design protection for spare parts will have a longer transitional period (eight years) to maintain such protection where the design registration covering the spare part is applied for before the new Design Directive comes into force. This is to ensure that existing design rights protections in spare parts are safeguarded.
Additional provisions in the Design Directive
The new Design Directive introduces some further changes to keep in mind, including:
- Unregistered design protection – Member States will no longer be able to provide unregistered design protection on a national level. Unregistered design protection will now only be available across the EU in the form of a UEUD. At a national level, only registered design protection will be available.
- Non-registrability and invalidity provisions – Grounds for non-registrability and invalidity of national registered designs that were previously optional are now mandatory. This is to ensure greater predictability, and consistency with the REUD system.
UK and EU divergence
In the aftermath of Brexit, the UK has continued to apply the harmonised approach (set out by the prior Regulation/Directive) to UK Registered Designs and the new right created on Brexit, the Supplementary Unregistered Design. However, given the changes introduced by the new EU design framework, there will now be several differences in UK and EU design law and practice (albeit with some existing overlaps), introducing an added layer of complexity for designers seeking protection across both territories.
It will be interesting therefore to track developments in relation to reform of the UK's approach to design law and practice. In 2022, the UKIPO launched a consultation on reform, but this was paused in 2023 due to the then Government's priorities of reviewing retained EU law following the end of the Brexit transition period. We expect the consultative process to recommence shortly, and it will no doubt be informed by the EU reforms, as well as proposals for a new Design Law Treaty (to be discussed at a Diplomatic Conference of WIPO Member States in November). This should provide some reassurance to designers who are already faced with a complex design rights framework.
What's missing in the EU design package?
It is notable that, whilst seeking to ensure design law is fit for new technologies, there is only one reference to artificial intelligence in the EU design package (in the context of 3D printing). The UKIPO's 2022 consultation on AI and IP rights briefly raised the question of the implications of AI and the protection of computer-generated works (under the Copyright, Designs and Patents Act 1988 in the UK) for protection of designs. However, this was not explored in great detail in light of the limited responses from respondents, and the understandable focus on the impact on copyright and patents. Given the leaps in generative AI in the two years since that consultation, there may be some unanswered questions on how AI-generated designs should be protected and enforced (and it will be interesting to see if this features in future UKIPO consultations in the design context).
A second potentially significant omission concerns UEUD and clarity regarding the rules around first disclosure of designs. There has long been uncertainty as to whether the Design Regulation requires a design to be 'first disclosed' in the territory of the EU for unregistered design protection to arise, or whether it is sufficient for the design to have been disclosed anywhere but so that, in the normal course of business, it could reasonably have become known to the circles specialised in the sector concerned, operating within the EU. The prevailing interpretation in the EU, as adopted in a German court decision, has been that, for a design to be capable of unregistered protection in the EU, there must be a first disclosure in the physical territory of the EU. However, there has been no decision of the European Court of Justice on this point, and some doubt this interpretation.
Given the uncertainty over the issue, designers seeking to commercialise their designs in the EU have either had to ensure that they make their first disclosure in the EU or apply for EU registered design protection (including within as appropriate grace period). The same interpretive uncertainties apply in relation to the correct interpretation of the UK's similarly worded provision in relation to first disclosure for the purposes of the Supplementary Unregistered Design, with the same implications.
Many designers have sought to deal with this uncertainty and to be in a position to rely on unregistered design protection in both the UK and the EU by seeking to implement simultaneous disclosure of their designs in both territories. However, this remains untested.
Interestingly, the provision in the Regulation relied upon by the German court for its interpretation (Article 110(a)(5), which provided that "a design which has not been made public within the territory of the [EU] shall not enjoy protection as an [unregistered Community design]") (our emphasis) has now been removed from the amended Regulation. This provision was also removed in the UK's retained EU law version of the Design Regulation. This omission may therefore potentially serve to re-open the door to arguing that a design first disclosed outside the EU may be protected by an UEUD (and for a design first disclosed outside the UK to be protected by Supplementary Unregistered Design) provided it could reasonably have become known to the circles specialised in the sector concerned, operating within the relevant territory. Given the challenges this gap in protection has presented to designers following Brexit, it will be very welcome news indeed if this is clarified and the gap in protection removed.
Next steps
Given the changes on the horizon in the EU's design framework, and the potential for changes also in the UK, it is important that designers carefully consider their approach to registering and/or enforcing their designs taking into account the differing regimes. They should also engage with the consultation in the UK when this is released.
As design developments in the UK and EU continue apace, until the position in respect of first disclosure of designs is clarified, designers are encouraged to continue to take precautionary measures such as simultaneous online disclosure of designs both in the UK and EU and/or seeking registration of key designs within the twelve month grace period.
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