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Freshfields TQ

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| 3 minutes read

A new design for EU design law

After more than 20 years since the Community design framework was introduced, the Commission has taken the first steps to update the existing rules to technology developments such as 3D printing, NFTs and the metaverse. On 28 November 2022, the European Commission presented two proposals to revise the Community Design Regulation  and the Community Design Directive. The aim? To make EU design law fit for the digital age, and to make industrial design registration cheaper, quicker and more predictable.

Outline of planned update

  • Design application: The proposals provide that the representation of the design in the application for registration may be in any form of visual reproduction (dynamic, animated etc.) effected by general available technology (videos, computer imaging/modelling etc.), rather than only a static representation.
  • Definitions: To align with the digital age, the definitions of “design” and “product” will be updated, clarified and broadened. As of now, a design referred to the appearance of a product resulting from the features such as lines, contours, shape of the product itself and/or its decoration. The new definition provides that in addition to the existing parameters, the parameters of movement, transition, or any other sort of animation of those features may also contribute to the appearance of designs. Moreover, a product does not need to be embodied in a physical object anymore but can be materialized in a digital form.
  • Repair clause: To increase the competition in the spare parts market, a permanent repair clause will be introduced according to which design protection will not be conferred on designs that constitute a ‘must match’ part of a complex product provided that such product is used for the repair of the complex product. However, to employ the repair clause as a defense against infringement claims, consumers must be informed of the origin of these parts.
  • Object of protection: The proposals clarify that only visibly shown features of a product in the application for registration will benefit from design protection. They also provide that design features of complex products must be visible during normal use to enjoy protection, but design features of non-complex products do not need to be visible at any particular time or in any particular situation to enjoy protection.
  • Scope of rights conferred: The increased use of 3D printing technologies resulted in a massive growth of copying works of art. To remedy this, the proposals prohibit to download, copy, share or distribute any medium or software recording a design (such as a CAD file) that enables a product to be made.
  • Limitation of the rights conferred: The proposals set out two new exceptions for the use of designs: “referential use” in the form of comparative advertisement and “critique and parody use”.

Additional changes to the Community Design Directive

  • Unregistered Designs: The discretion for Member States to grant design protection at the national level not only in registered, but also in unregistered form, will be removed. However, unitary protection in the form of the unregistered EU design will remain available.
  • Grounds for non-registrability and invalidity: To fully align the scope of substantive examination across the EU, the grounds for non-registrability (public policy ground etc.) will be set out exhaustively. Additionally, the existing optional grounds for invalidity (lack of individual character etc.) will be converted into mandatory grounds for invalidity, which must be implemented on a national level.
  • Administrative invalidity proceedings: While in some Member States, an administrative invalidity proceeding already exists, in others the validity of a registered design can only be contested in a court proceeding. The proposal introduces a requirement for each Member State’s Intellectual Property Office to deal with first-instance invalidity proceedings concerning their respective national designs. The aim is to reduce the costs and timescale for challenging the validity of a national registered design, whilst ensuring that the assessment is conducted by someone with particular expertise in designs.

What’s next?

The two proposals will now be transmitted to the European Parliament and the Council for adoption. Once adopted, most amendments to the Community Design Regulation will become applicable three months after its entry into force, whilst the EU Member States will have two years to implement the Community Design Directive into national law. We will keep you updated on the ongoing developments.

With many thanks to Elisabeth Gschösser for her valuable input.


europe, intellectual property, patents