On 10 October 2024, the Council of the European Union adopted the two proposals to revise both the Design Directive (Dir. 98/71/EC) and the Community Design Regulation (Council Regulation (EC) No 6/2002. This new “Design package” mainly aims to align the design protection system in the EU with the digital age and to create a coherent design system.
Definition of a design and a product
Both the definition of “design” and “product” have been updated.
Designs still cover 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, but now also encompass “movement, transition or any other sort of animation”.
Regarding the new definition of a product, it now encompasses any industrial or handicraft article, excluding computer programs, “whether embodied in a physical object or in non-physical form”. Examples of products include packaging, sets of articles, logos, surface patterns, graphic user interface, but also spatial arrangement of items intended to form an interior or exterior environment (e.g. a store layout, as previously recognized under trademark law following the CJUE Apple case, C‑421/13).
The update of these two definitions aims to make these concepts fit for the digital age and for future technological developments, for example by ensuring that the appearance of digital products is now covered by the design protection.
The repair clause
Regulation 6/2002 on Community designs excludes protection for designs that constitute a component part of a complex product used so as to restore the complex product’s original appearance. This exclusion, commonly referred to as the “repair clause”, allows third parties to reproduce protected features of a design solely for the purpose of repairing a complex product and restoring its original appearance.
However, Directive 98/71 on the legal protection of designs does not include such a “repair clause”. Instead, the Directive provides that “Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts”. The absence of a repair clause in the Directive has led to disparities among Member States, with some still permitting protection and enforcement of design rights covering spare parts. As of today, competition in spare parts is still allowed in 12 Member States.
In 2017, the CJEU already provided in the Acacia v Audi and Porsche judgment (Joined Cases C‑397/16 and C‑435/16, 20 December 2017) certain clarifications regarding this “repair clause”, indicating that manufacturers or sellers of a component part of a complex product, who are under a duty of diligence as regards compliance by downstream users, must do the following to rely on the repair clause:
- inform the downstream user, through a clear and visible indication (on the product, on its packaging, in the catalogues or in the sales documents), that the component part concerned incorporates a design of which they are not the holder and that the part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance;
- ensure (e.g. through contractual means) that downstream users do not intend to use the component parts at issue in a way that does not comply with the repair clause;
- refrain from selling a component part when they know or should reasonably know that the user will not use the part in question in accordance with the repair clause.
The new Directive (Article 19) and the revised Regulation (Article 20a) both incorporate a “repair clause”. Under this clause, design protection remains excluded for a design that constitutes a component part of a complex product, upon whose appearance the design of the component part is dependent, and which is used solely to enable that complex product to be repaired so as to restore its original appearance. However, the new Directive and Regulation now explicitly provide that the repair clause cannot be invoked by the manufacturer or seller of a part of a complex product who has not duly informed consumers, by means of a clear and visible indication on the product or in any other appropriate form, of the commercial origin of the product and the identity of the manufacturer of the product intended to be used for the purposes of repairing the complex product. The objective of this new condition is to enable consumers to make an informed choice between competing products that can be used for repairs.
It is noteworthy that this new repair clause does not specify whether the second and third conditions provided in Acacia v Audi and Porsche must also be met to rely on the repair clause, potentially leading to some uncertainty.
This new repair clause must be implemented by all the EU Member states within eight years following the date of entry into force of the new Directive.
Rights of the design holder and permissible uses
On the one hand, the Design package extends the rights of holders of registered designs, who now have the right to prohibit the creation, downloading, copying, sharing and distribution to others of any medium or software recording their design. In practical terms, this new right implies that the scope of protection of a registered design now explicitly extends to acts relating to 3D printing products. Holders of registered designs now also have the right to prevent counterfeit products transiting through EU territory.
On the other hand, the Design package also provides new defences and permissible uses such as acts performed for the purposes of comment, criticism or parody, under the condition that the acts in question are compatible with fair business practices and do not unduly prejudice the exploitation of the design.
End of national unregistered designs
Even though no Member State currently has a national unregistered scheme in force, the revised Directive now prohibits Member States from having their own national unregistered design regimes (Article 3). However, designers can still rely on the unregistered EU design scheme (and on copyright if the originality condition is met).
Multiple applications and fees
Under the current Regulation, several designs can be combined within a single application, called “multiple application”, but only for products of the same Locarno Class. Under the revised Regulation (Article 37) and the new Directive (Article 27), it is now possible to file multiple designs in the same application without being limited to products of the same Locarno Class.
Finally, the amount of different fees has been increased, such as the application fees which risen from 250 to 350 euros.
Conclusion
The revised Regulation will enter into force on the twentieth day following its publication in the Official Journal of the European Union, and most of its provisions will become applicable three months after its entry into force (18 months for some provisions). Regarding the new Directive, it will enter into force on the twentieth day following its publication in the Official Journal of the European Union (36 months for some provisions), and Member States shall bring into force the necessary legislative, regulatory, and administrative provisions for their national law to comply with most of the Directive’s provisions within 36 months after its entry into force.
For any questions or assistance, please reach out to our
Intellectual Property Team | IP@simontbraun.eu – +32 (0)2 543 70 80
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This newsletter is not a legal advice or a legal opinion. You should seek advice from a legal counsel of your choice before acting upon any of the information in this newsletter.
