By Vikrant Rana and Dhruv Mathur
Introduction
The European Union (EU) has implemented a significant legislative reform in its design protection framework, aiming to modernize and streamline the system. The reform, encapsulated in the Amending Regulation and the Recast Directive, introduces important changes that will apply in two phases. These amendments reflect the EU’s commitment to adapt intellectual property laws to the digital age, ensuring clarity, efficiency, and harmonization across member states.
This article provides an overview of the key changes introduced in Phase I of the reform (which will be effective from May 01, 2025), their legal implications, and their impact on designers, businesses, and consumers.
1. Background and Objectives of the Reform
The need for legislative revision arose from an extensive evaluation conducted by the European Commission in 2014. The study identified several shortcomings in the existing EU design legislation, including:
- Outdated procedures creating administrative burdens.
- Lack of harmonization between EU and national design laws.
- Absence of clear rules for digital-age design protection.
- Legal uncertainty in the single market for spare parts.
To address these issues, the EU introduced the Amending Regulation and the Recast Directive, with the primary goals of:
- Strengthening and modernizing design protection.
- Simplifying and making design registration more accessible.
- Enhancing the interoperability of EU and national design laws.
- Introducing an EU-wide repair clause to resolve issues in spare parts protection.
2. Key Legislative Changes in Phase I
| S. No. | Feature | Old Reform (Pre-Amending Regulation) | Post Reform (New) |
|---|---|---|---|
| 1 | Terminology and Structural Modifications – (Articles 1 and 2 EUDR as modified by the Amending Regulation) | Community Design Regulation | European Union Design (EU Design) regulation |
| 2 | Filing Location | EUIPO or National Offices- Applicants could file design applications directly with the European Union Intellectual Property Office (EUIPO) or through the national intellectual property offices of EU member states. | EUIPO only- Filing is now exclusively handled at the EUIPO level. The option to file via national offices has been removed. |
| 3 | Definitions: “Design” | Limited in scope- The definition of “design” was generally interpreted as the appearance of a product resulting from its lines, contours, colours, shape, texture, materials, or ornamentation. | Expanded to explicitly include animation (movement and transition of design features)- The definition now specifically recognizes animation, broadening the scope of what can be protected as a design. |
| 4 | Definitions: “Product” | Primarily physical items- The definition of “product” primarily focused on tangible, physical articles. | Explicitly includes non-physical items, spatial arrangements of items, parts for complex products, graphic works, symbols, logos, surface patterns, and graphical user interfaces. |
| 5 | Object of Protection | Implicitly defined- The specific features of a design that were protected were largely determined through case law and interpretation. Less explicitly defined in the regulations themselves. | Clarified: protection conferred for visible features in the application. Component parts of a complex product must be visible during normal use. |
| 6 | Exclusive Rights | The description of the rights conferred to the design holder was framed in more general terms related to use, manufacture, offering for sale, putting on the market, importing, exporting, or using a product incorporating the design. | Aligned with EU and national trademarks. Explicitly lists infringing uses, including creating, downloading, copying, and sharing media or software that records the design (relevant to 3D printing), thus providing stronger protection for digital infringement. |
| 7 | Transit of Counterfeits | Less clear on customs enforcement- The ability to prevent counterfeit products from transiting through the EU, without being released for free circulation, was not as explicitly defined. | Design right holders can prevent counterfeit products from transiting through EU territory without being released for free circulation. |
| 8 | Limitations | The regulations had a limited number of explicit limitations on the exclusive rights, primarily focusing on acts done privately and for non-commercial purposes, or for experimental purposes. | Added: (1) Acts for identifying/referring to a product of the design right holder (for interoperability). (2) Acts for comment, critique, or parody (freedom of speech). Both subject to fair trade practices. |
| 8 | Limitations | The regulations had a limited number of explicit limitations on the exclusive rights, primarily focusing on acts done privately and for non-commercial purposes, or for experimental purposes. | Added: (1) Acts for identifying/referring to a product of the design right holder (for interoperability). (2) Acts for comment, critique, or parody (freedom of speech). Both subject to fair trade practices. |
| 9 | Exhaustion of Rights | Limited territorial scope- Exhaustion typically applied within the “Community” (i.e., the EU). The regulations were less clear regarding the broader European Economic Area (EEA). | Extended to the entire European Economic Area (EEA)- Provides greater clarity and consistency regarding the geographic scope of exhaustion. |
| 10 | Design Notice- marking | There was no officially sanctioned symbol or method to publicly indicate that a design was registered. | Introduced: Use of “(D)” symbol to indicate design protection- Facilitates the marketing of products protected by design registration and raises awareness of the design registration regime. |
| 11 | Repair Clause | Transitional provision (Article 110 Community Designs Regulation): A temporary provision allowed for the use of component parts of complex products for repair purposes under certain conditions. | Permanent provision. Clearer scope of application- only applies where the appearance of the component part is dependent on that of the complex product. |
| 12 | Filing Date Requirements | Less stringent: Obtaining a filing date had fewer prerequisites. Payment of application fees was not necessarily a strict requirement for securing a filing date. | Payment of application fees becomes a filing date requirement- Aligns with trademark law and ensures that examination does not begin before payment. |
| 13 | Specimens | Applicants could submit physical specimens of the design as part of the application process. | The option to submit physical specimens has been eliminated, likely in favour of digital representations. |
| 14 | Multiple Applications | Unity-of-class required- Multiple designs could only be filed in a single application if they belonged to the same Locarno class. This could create difficulties if the designs spanned multiple classes. | Unity-of-class requirement removed. Can contain designs in different classes, limited to 50 designs max- this streamlines the application process for diverse design portfolios. |
| 15 | Deferment of Publication | Subject to publication fee- Applicants could defer the publication of their registered design, but this required the payment of a publication fee. | No longer subject to publication fee. Designs must be surrendered to prevent publication- Simplifies the process. Non-payment now leads to rejection, not just delayed publication. |
| 16 | Renewal Period Calculation | Based on month end- renewal period was based on the last day of the month in which protection ended, rather than the specific expiry date of the registration. | Based on expiry date. Basic renewal period: 6 months ending on the expiry date. This aligns with EU trademark renewal practices for greater consistency. |
| 17 | Renewal Fees | Renewal fees were generally lower and less differentiated based on the number of renewals. | Increased, with progressively higher fees for subsequent renewals- Encourages design holders to only maintain registrations for designs that are actively being used in the marketplace. |
| 18 | Invalidity: Disclosure | Less clear on grace period- The extent to which a prior disclosure impacted novelty and individual character was sometimes subject to interpretation. | Clarified: 12-month grace period applies if the previously disclosed design is identical or does not produce a different overall impression- Prevents repetitive litigation and promotes legal certainty. |
| 19 | Invalidity: Res Judicata | The regulations did not explicitly codify the principle of res judicata in the context of invalidity applications. | EUIPO decisions and court judgments have res judicata effect on subsequent invalidity applications/counterclaims. |
| 20 | Priority Right Effect | Limited application- The effect of priority rights was primarily considered in relation to conflicts with other design rights. | Clarified: Priority is relevant in conflicts with other design rights, distinctive signs, and unauthorized use of copyrighted work. |
| 21 | Oral Proceedings | Public access to oral proceedings before various divisions of the EUIPO was not always clearly defined. | Public access defined. Hearings before Examiners and Department of the Register shall not be public; hearings before Invalidity Divisions and the Board of Appeal shall be public. |
| 22 | File Inspection | Physical inspection possible- Interested parties could physically inspect design files at the EUIPO premises. | Only online inspection, free of charge. No inspection at EUIPO premises, no paper copies. |
| 23 | Register Information | The Register contained the addresses and nationalities of design holders and representatives. | Addresses and nationalities of design holders/representatives removed from the Register and public database- Enhances privacy and protects personal data. |
| 23 | Fees | Separate fees were required for the registration and publication of a design. | Unified into a single application fee. Fee structure changed (see Annex I of Amending Regulation). Eliminated several fees. |
HOW FARE IS THE REFORM?
- For design owners, the extended scope of protection (including virtual goods and animations), the explicit rights regarding 3D printing, and the transit rule are beneficial. These changes modernize the system and address contemporary challenges like counterfeiting and digital infringement.
- For spare parts manufacturers, the permanent repair clause provides legal certainty, allowing them to produce “must-match” spare parts to restore the original appearance of complex products.
- For consumers, increased competition in the spare parts market could lead to lower prices, but there are concerns about the quality and sustainability of non-original parts.
However, some concerns exist:
- The repair clause is controversial, with some arguing that it undermines design protection and the incentive for innovation.
- Increased renewal fees could disproportionately affect small and medium-sized enterprises (SMEs).
Overall, the reform is a significant update that modernizes and streamlines the EU design protection system. While some aspects may be contentious, the changes generally aim to balance the interests of designers, manufacturers, and consumers in the digital age.