On 29 April last, the European Commission, launched a public consultation concerning the review of EU rules on industrial design. Said consultation, which may be found in the following link:

https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/12609-Review-of-the-Designs-Directive/public-consultation_en

seeks to obtain views of all those affected by design protection in Europe on selected issues and potential policy options and their impacts. The consultation period will end on 22 July 2021.

The Community design has its legal base in the Directive on the legal protection of designs n. 98/71/EC of 13/10/1998.

On the basis of said Directive, the Community Design regulation n. 6/2002 of 18/12/2006 was created.

The above cited consultation has the intent to collect opinions from the stakeholders to support the review of the Community Design Regulation and the Design Directive.

In this consultation different questions are raised concerning new types of designs that could be considered in the regulation and some already existing trigger points of design law are examined. However, no attention has been paid to an issue that, in my opinion, is the base of existence of the design law itself.

As you may know, pursuant to Article 3.2 of Directive 98/71 “A design shall be protected by a design right to the extent that it is new and has individual character”. Furthermore, Article 4 states “A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details”.

The subsequent Article 6 of Directive 98/71 seemed to give further meaning to the design law, in affirming that for the assessment of the design’s novelty, disclosures that cannot reasonably have become known in the “normal course of business to the circles specialised in the sector concerned, operating within the Community” are not to be taken into account.

This clause has been subject of much debate and was interpreted by EU some design practitioners in the sense that the novelty of a design must be considered only in connection to the field to which the design pertains.

However, the introduction of the subsequent Community Design Regulation n. 6/2002, made such interpretation more problematic.

In this regard, Regulation n. 6/2002 affirms in Article 36.6 that the “indication of the products”, the “description” of the design and the “classification of the products” specified at the moment of filing of the design “shall not affect the scope of protection of the design as such”.

This provision has in fact been the first obstacle to contextualize the novelty of a design.

The second, more recent, obstacle has been, the decision of the European Court of Justice in Joined Cases C‑361/15 P and C‑405/15 P – Easy Sanitary Solutions/Group Nivelles and EUIPO, of 21 September 2017, where under paragraph 96, the Court affirmed that “a Community design cannot be regarded as being new […] if an identical design has been made available to the public before the dates specified in that provision, even if that earlier design was intended to be incorporated into a different product or to be applied to a different product.”.

The above clarification provided by the Court is surely a correct interpretation of law, yet it definitely undermines the community design institution.

Following, I will provide an example in an attempt to further explain the issue.

My client is an eclectic designer and has informed me that he has invented an unusual chaise longue, which design is entirely new to the field of furniture, as displayed in the below drawing:

Upon his request I filed the relative community design, indicating as the product “Chaise lounges” which, pursuant to the Locarno classification, belongs to class 06-01. Together with the design application, I provided the following description: “the applied design is a design of a chaise lounges: a person may lie down on this chaise longue by putting one leg over the other, in the longest part thereof and leaning back against the short-dented portion”.

The drawing provided in the design application is the following:

A short time after the filing, the client indicates it wishes to enforce the design filed. As you all know, before being able to enforce such design, the validity thereof must be ascertained.

In this respect, the client informs me that said design is new in the furniture field and has a strong individual character, since the design of a chaise longue having the shape of a fork has not been used in the specialised sector of furniture, nor has any informed user been exposed to such design before.

Subsequently, I must determine if the design complies with the necessary legal requisites; to such end, I have to consider that the indication of the product is “Chaise lounges”, in class 06.01 of Locarno classification.

However, according to article 36.6 of Regulation 6/2002, such classification “shall not affect the scope of protection of the design”.

The assessment of the presence of the requisite of law is surely a way to understand if a design can be protected, yet I may not use the indication of products nor its classification to appreciate what the design is, because this would “affect the scope of [its] protection”.

It is reminded, that together with the design a description was filed, explaining the representation of the design and clarifying its nature or purpose. I recall however that, based on the same article 36.6., neither this description can be used to comprehend what is protected by the design.

Moreover, under the praxis of the European Union Intellectual Property Office the description of a design will not be published in the register and, even if it is part of the application file, it will not be open for inspection by third parties. As a consequence, it is reasonable to assume that said description can have no impact on the extent of protection of design, as third parties are not in the position to have knowledge of it.

Therefore, what remains for our assessment, is the drawing provided. The image however does not demonstrate the product’s actual dimensions; the chaise longue may be as big as a regular sofa or as small as a normal item of cutlery. Pursuant to the EUIPO Guidelines no background may be added to the design, to illustrate the dimensions of the chaise longue, since a neutral background is required.

Even if I were to file a picture, showing a person sitting or lying on the chaise longue (where this person is indicated with dotted lines (to exclude protection)), to demonstrate its true size, such clarification would have again no effect on the design’s protection or scope. Considering the European Court of Justice’s decision, that the novelty of a design must be evaluated irrespectively of any sector, I cannot rely on any instruments to affirm the actual size of my client’s product.

While remembering the Easy Sanitary Solutions decision, I walked into my kitchen and I saw the below fork on my table. Said fork was in my house (and obviously in commerce) well before the filing of my client’s design application.

As you will see, this fork is identical to the design of the chaise longue as filed. However, my client’s design pertains to a different field and in that specific field the design is neither identical nor similar to any existing chaise longue.

I am therefore compelled to respond to my client that the fact that the fork pertains to a different field does not influence its novelty assessment.

As a consequence, my client’s design, even if it were particularly original in the field of furniture, is not new and is for this reason null.

This is the key issue of the design law.

The other issues indicated in the public consultation are, in my opinion, merely ancillary. In fact, if an identical shape is already present in any other field of commerce, most shapes will not be considered new even if applied to an object pertaining to a completely different area and therefore there is no possibility to apply the other provisions of EU design law.

In my opinion, the design law must also protect the idea of designers to use an already existing shape in a totally different area: design is creativity and to imagine an already existing shape, applied to a totally different field, is an expression of a designer’s creativity and it must therefore be protected. In commerce there are numerous examples of what above and I believe that nobody has ever doubted that said products are not designs.

A new community design law should stipulate that a design is new on the condition that in the relevant sector there are no identical designs. Furthermore, it should clearly indicate that the design application should make reference to the relevant sector.

I have taken this opportunity to call on all stakeholders to carefully consider the above and express their opinion thereon by 22 July 2021 in the occasion of the public consultation in order to have a design law that better protects creativity.