On 7 November 2023, the EU Parliament published the final form of the updated EU Designs legislation. The new legislation, which takes form through a new Regulation and new Directive, are the Parliament’s response to the EU Commission’s proposal of 29 November 2022. If you have not read our previous Law Now which covered the initial proposals in detail, you can find it here.
The new legislation is the biggest shakeup to design rights in over 20 years, and affects both Community Designs (now called EU Registered Designs under the legislation) and nationally registered designs in Member States. The Commission had several goals for these changes, including improving design protection for the digital and global age, making designs more accessible and attractive to SMEs, and removing inconsistencies between design and trade mark law.
There are some significant differences between the original proposal and the final wording published this month. We have set out the key changes below to help you navigate the new regime. These are a combination of the more significant changes since the original proposal, as well as other significant clauses that were not covered by our previous Law Now.
Changes to the exception for Must Match Parts
The initial proposal included a clause that would remove design protection from “must match” parts in complex products. Whilst this clause remains in the final legislation, there are some changes to how and when it will take effect.
First, certain parts – namely “rims, covers and similar parts” where the appearance is not determined by the appearance of the complex product – are now excluded from the scope of the legislation. The extent of this limitation is unclear. It is not apparent, for instance, what it means for a part not to be “determined” by the overall appearance of the product. Presumably, many car rims are designed to fit with the overall aesthetic of the car, despite being capable of being removed or changed, and are therefore determined by the overall appearance of the vehicle. The extent of the exception may therefore be a matter of degree or potentially limited to a fixed set of automotive parts. We expect the extent of this exception will need clarification, either by being the subject of significant litigation or, preferably, through practice guidance.
Second, when producing a must-match part of a complex product subject to a design right, the new producer will be required to indicate the identity of the original manufacturer to qualify for the exception. This would include the name, address, phone number and/or email address of the original manufacturer. Whilst a duty to notify consumers of the “origin” of the product was present in the previous draft, the requirement is now more onerous and detailed.
Finally, there is also a significant shift in the timescale for implementation. The Commission originally proposed a mandatory 10-year runoff period before the right to repair would come into effect. In contrast, the EU Parliament has now changed the deadline such that Member States can opt for a shorter runoff period of not less than 3 years (with the 10-year runoff being a default position). Whether any Member States opt for a shorter runoff remains to be seen.
These changes reflect the difficult balance the EU Parliament had getting this clause through the legislative process.
Removal of requirement for Member States to introduce Administrative Invalidity Proceedings
In our previous Law Now, we discussed the proposal for the introduction of new administrative invalidity proceedings for national designs, identifying it as a key and welcome change. Whilst the introductory text to the new legislation has reaffirmed that administrative invalidity proceedings are desirable, these are no longer to be made mandatory under the new Directive.
This change is disappointing and will affect enforcement for many rightsholders, particularly smaller businesses. At present some jurisdictions’ IPOs already had standing to deal with first instance invalidation proceedings. In others, rightsholders must apply to the courts to protect their rights, which inevitably escalates the time and cost of protecting their designs. Administrative invalidity proceedings can also improve the quality and predictability of first instance decisions, as they are more likely to be made by someone with suitable expertise in designs (as opposed to a commercial high court judge, for whom design invalidity cases may be few and far between).
The increased cost of court proceedings may dissuade some rightsholders, particularly SMEs, from protecting their designs from infringing registrations and may undermine confidence in design protection generally in some jurisdictions.
EU Design Fees to be fixed in the Regulation
Under the new wording, registration and renewal fees for EU Registered Designs will be fixed in the Regulation. This is a significant change, which is aimed at keeping the fees low and predictable. The final fees are as follows:
Type of Fee
By fixing the fees in the Regulation, the EU Parliament has made it far more difficult to change them. Changes to the fees will need to be agreed by the EU Parliament through an amendment to the Regulation, rather than periodically updated by the EUIPO. In practice, this means fewer updates to fees. The change should be particularly felt by SMEs, for whom affordability and predictability are a key issue.
There are no changes to national design right registration fees, which will continue to be set by each national IPO. Whilst we had expected the EU Parliament would consider unifying fees, they state in the Recitals to the Directive that national IPOs need to set their own fees to ensure they are adequately resourced.
Removal of requirement for multiple applications to all be under the same Locarno class
The EU Parliament has simplified the process when applying for multiple designs under the same application. The requirement that designs within a single application must all fall within the same Locarno class has been removed, which will reduce the administrative burden of registration.
Whilst this may appear to be a minor change, this will help all manufacturers, particularly larger organisations. For new product launches, manufacturers can now register all aspects of their products – the product, the product’s user interface, and the packaging – all under a single application. This previously required multiple applications, thus requiring the manufacturer to spend additional time and costs. We believe this is a very welcome and significant improvement.
Harmonisation of deferment of publication for national designs
The publication of all national design applications will now be able to be deferred by up to 30 months, in line with the period under the Hague system. This was already implemented for Community Registered Designs but will now be extended to all national registered designs. By contrast, the UK only allows for deferment of up to 12 months.
Deferring publication allows an applicant to postpone the date on which his application is published, which can help prevent registrations being rejected in other jurisdictions due to a lack of novelty. At present, the time period for deferment varies between Member States, which can complicate your registration strategy unnecessarily.
The new wording also alters the timescale to be “up to” 30 months, rather than being 30 months specifically. This was possibly a linguistic oversight in the initial drafting. However, it allows for better coordination between jurisdictions by adding some flexibility of when publication occurs, so that it can be timed appropriately.
Furthermore, there is a new provision under which publication will not proceed unless approved by the applicant. Given the potential impact of publication on your ability to register your design in other jurisdictions, this is an excellent change which rightsholders will welcome and will no doubt now lobby the UKIPO to adopt a similar position.
Harmonisation of the rules of representation and examination between EU and national designs
The new Directive will require all Member States to update their rules of representation so that they match the current rules for EU Registered Designs. The stated “preference” for dotted or broken lines for areas where no protection is being sought has been removed, with the emphasis now being on consistency and clarity within the application. There is also a requirement for the Member States’ IPOs to cooperate on common standards for enforcing representation requirements, such that they should now be consistent across the bloc.
Examination of national designs is also limited to the substantive grounds for non-registrability set out within the new Directive. This is a significant step towards harmonizing the availability of design rights across the bloc, as all national IPOs will now examine based on the same fixed grounds only.
Other notable points:
The following smaller changes are also worth noting:
- Number of Views – We had anticipated that the number of views one can submit to the EUIPO and national IPOs would be regulated, such that it would be either unlimited or extended above the current provisions. At present, only 7 views of a design are allowed. However, this conflicts with the Hague provisions, which allows an unlimited number of views. European Community Designs which originate from the Hague system can therefore have unlimited views, despite the 7-view limitation. It is disappointing that the opportunity to harmonise the rules on number of views to reflect the Hague unlimited position has not been taken.
- Parody and Critique Exemptions – The final legislation has kept the new exceptions for referential use, critique and parody. As set out in our previous Law Now, there are several questions surrounding the extent of the exceptions, which we suspect will be the subject of significant litigation. We went into further detail on the nature of these concerns in our previous Law Now.
- Non-registrability of Designs incorporating National Emblems – There is a new provision in the legislation prohibiting the registration of any Article 6ter of the Paris Convention and other badges or emblems of national interest. Article 6ter includes State Emblems, Official Hallmarks and flags. Many EU countries already prohibited registration of these. However, the change will harmonise these rules across the bloc.
- 3d printing codes and software and 3d animated design protection – We commented on these proposals in our previous Law Now, which include new protections against illegitimate 3D printing and several proposals aimed at improving design protection for 3D animated and digital designs, which have historically been difficult to register. These proposals have been kept with no substantive changes, which will be of great comfort to many digital designers.
- Protection for goods in transit - There were also proposals to extend design protection to goods in transit that are merely passing through the EU from one third country to another. These provisions mirror a system that already exists for trade marks, but which had received significant criticism by industry, not least for its impact on international trade. We had anticipated that these provisions would be tempered, given the general animosity towards them. However, the final wording has kept them in full, with no substantive changes.