EU design law is changing - what do you need to know?
The proposal for a revised Regulation and Directive on designs was adopted on 28 November 2022, following a lengthy period of consultation and assessment. The proposal will now be debated by the European Parliament and Council, and may be passed in 2023.
The European Commission proposes to introduce a repair clause as part of its overhaul of design protection in the EU. If passed, this will harmonise the law in EU Member States by allowing the reproduction of must-match spare parts.
The question of design protection for spare parts has long been contentious in the EU and until now it has not been harmonised. Article 14 of the existing Designs Directive provides that Member States shall maintain their existing regimes for the protection of component parts of complex products.
The “repair clause” in Article 19 of the proposed Directive and Article 20a of the proposed Regulation states:
“Protection shall not be conferred on a registered design which constitutes a component part of a complex product, upon whose appearance the design of the component part is dependent, and which is used within the meaning of Article 16(1) for the sole purpose of the repair of that complex product so as to restore its original appearance.”
However, this paragraph cannot be invoked by the manufacturer/seller of a component part of a complex product “who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the origin of the product to be used for the purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair”.
The repair clause also provides that designs already granted protection will remain covered for a transitional period of 10 years.
If it is implemented as drafted, this change will have significant implications in particular for the automotive industry in Europe.
There are a number of other changes proposed in the reform. These include:
The definition of design has been expanded to include “the movement, transition or any other sort of animation” of features of a product.
Product is defined as any industrial or handicraft item “regardless of whether it is embodied in a physical object or materialises in a digital form”. This includes “packaging, sets of articles, get-up, spatial arrangement of items to form, in particular, an interior environment, and parts intended to be assembled into a complex product” and “graphic works or symbols, logos, surface patterns, typographic typefaces and graphical user interfaces”.
Rights holders have a new right to prevent third parties from “creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product [incorporating the design] to be made”.
The holder of a registered design may display the letter D in a circle along with the registration number to indicate a registered design right.
Member States shall provide for “an efficient and expeditious administrative procedure before their offices for the declaration of invalidity of a registered design right”.
Watch this space!
The design reform has been in the offing for a number of years, and this is a comprehensive package of changes. The spare parts proposal is likely to attract most attention, but other aspects will also affect design right holders and applicants.
If implemented as planned, the changes are likely to make EU design rights even more attractive as a means of protection, including for graphical user interfaces and store layouts. We will continue to monitor the reforms and provide further updates in due course.