The European Commission has adopted two proposals which seek to modernise design legislation by way of implementing a revised Regulation and a revised Directive. Our Intellectual Property team looks at these proposals and the upcoming changes to the law in this area.

An evaluation of the EU framework for design protection was carried out by the European Commission (the Commission) in 2020. The results of that evaluation indicated that EU legislation for designs works well in general and remains largely fit for purpose. That being said, a number of areas that required improvement were identified, particularly to ensure that the European design regime would be fit to support the digital and green transition of EU industry. The consensus was that there is a need to re-align the current framework with evolving technologies. The shortcomings which were identified included:

• Outdated or overly complicated procedures
• A lack of clarity and robustness of certain key elements of design protection
• A lack of coherence of the procedural rules
• Inappropriate fee levels/fee structure and,
• An incomplete single market for spare parts

Two proposals have now been adopted by the Commission which seek to modernise design legislation by way of implementing a revised Regulation and a revised Directive. These proposals seek to address the issues identified above. We will now consider the main proposed changes in further detail.

Broadened definition of design

At present, designs allow for protection of the appearance of the whole or a part of a product resulting from the features of, in particular the:

• Lines
• Contours
• Colours
• Shape
• Texture, and/or
• Materials of the product itself and/or its ornamentation, that being surface decoration

A broadened definition of design has been proposed by the Commission which will include movement, transition or any other sort of animation. In addition, it is proposed that the scope for protection is extended to encompass digital goods such as for example, virtual designs in the Metaverse.

The term EU design will replace the previously used term community design. Registered designs will also be identified by a symbol with a d in a circle in the same way that ® is used for trade marks and © for copyrighted works.

Removal of unity of class requirement

Currently, an application for a registered community design which covers multiple designs in the same application must comply with the unity of class requirement. This means that all the products indicated for the designs contained in a multiple application must be classified in only one of the 32 Locarno classes. The Locarno Classification is the international classification used for the purposes of the registration of industrial designs. The proposed change will allow one EU application to cover multiple designs in various Locarno classifications.

This change will have the impact of simplifying the application process greatly where previously multiple designs relating to the same product or brand had to be filed individually.

Reduced application fees

Under the new regime, the level and structure of payable fees will be simplified and streamlined. The registration fee and publication fee will now be merged into a single application fee. In addition, it is proposed that some fees would be abolished such as that required to record a transfer of a registered community design. However, renewal fees will be slightly increased in order to encourage the abandonment of unused designs. The proposed new fees compared with the old fees are set out below:

Repair clause to allow reproduction of design of spare parts for repair purposes

Under the proposals, a repair clause has been introduced which means that design protection will no longer be given to ‘must-match’ spare parts, the appearance of which is dependent on the appearance of the original parts. This change will have a significant effect on the motor industry with the potential for far greater competition. Under this new provision however, the repair clause cannot be invoked where customers have not been informed 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 repair so that the customer can make an informed choice between competing products that can be used for the repair.

Conclusion

The new legislation represents a significant step in the modernisation of EU design law. The objective of the revisions is to ensure that design protection is fit for purpose, particularly in the digital age. In addition, it aims to increase accessibility and efficiency for individuals and small and medium enterprises.

At present, these new rules are not in force. The proposals are still undergoing review by the European Parliament and the Council. Upon adoption, the Directive will require transposition into Irish law within 2 years. Regarding the Regulation on the other hand, part of the changes will become applicable within 3 months of entry into force and the remaining sections will become applicable 18 months after entry into force. At present it is anticipated that the new regime will enter into force in Spring 2024.

If you are interested in discussing any of the issues raised in this article, please a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice