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Intellectual property - European Commission’s proposed changes to the EU designs regime

On 28 November 2022, the European Commission published proposals to revise the EU designs regime through a new Regulation (EC) 6/2002 and Directive (98/71/EC). The stated aims are to make the system ‘quicker, cheaper and more predictable’ (see: LNB News 29/11/2022 70).

What is the background to the European Commission’s decision to publish a proposed revised regulation and revised directive on designs?

Over the past eight years, the Commission has been considering modernising the EU designs framework, which has remained largely untouched for over 20 years. In 2020, it conducted a review that found the existing legislation to be ‘broadly fit for purpose’. However, it identified areas where the regime could be improved to the benefit of designers in the future digital world. It also noted that the registration procedure was overly complex and that there could be enhanced procedural unity between Member States (see: LNB News 18/11/2020 100).

One area of particular ongoing concern was the lack of EU-wide harmonisation regarding the protection of spare parts. Because Member States have been unable to agree an approach, a ‘transitional’ regime has been in place for over 20 years whereby individual Member States can decide whether ‘must match’ replacement parts are excluded from the regime. As a result, the market is fragmented, undermining the free movement of goods and effective competition.

What are the key changes introduced by the proposed new legislation?

Future technologies

The proposals aim to broaden the scope of designs to encompass new technological developments such as virtual designs in the Metaverse. The proposed definition of a ‘design’ includes any animated features and the definition of ‘product’ now includes industrial or handicraft items, regardless of whether they are embodied in a physical object or materialise in a digital form.

The registration process

The proposals broaden the ways in which applicants can represent their designs by allowing users to represent designs dynamically (by video, for instance) so long as it enables the details of the design to be clearly distinguished and published. The revised legislation also allows applicants to combine multiple designs in one application, removing the ‘unity of class’ requirement that represents an undue administrative burden on applicants and increased costs. Finally, the new legislation seeks to simplify the fee structure and reduce the fee level (by removing the separate publication fee and reducing fees for the first ten years).

New name and symbol to show registered design protection

The EU rights will be called EU designs rights, as opposed to the long outdated ‘Community design rights’. The proposals will also introduce a new ‘d in a circle’ symbol, like ® or ©, which will enable designers to advertise their registered design rights more obviously.

National administrative invalidity proceedings

The proposed directive stipulates that Member States should introduce administrative invalidity proceedings for national designs. This allows validity to be challenged before the Member State’s IP office rather than through more expensive and burdensome court proceedings.

3D printing

There is a specific proposal to combat unauthorised 3D printing of designs, making it an infringement to create, to copy or to distribute anything recording the design (eg a computer-aided design (CAD) file) for the purpose of enabling a product incorporating the design to be made. This will apply to 3D online platforms but certain uses will be exempt if carried out privately for non-commercial purposes.

Spare parts

Finally, the proposals aim to harmonise the rules on spare parts and to open up the EU market. The proposed revised directive introduces an EU-wide ‘repair clause’ into Directive (98/71/EC) which means that design protection will not be available for ‘must match’ spare parts. This would be instantly applicable to future designs, while designs already granted will continue to be protected by the existing transitional regime for 10 years.

Is there potential for divergence from the UK designs regime?

It is difficult to say at this stage. The UK Intellectual Property Office (UK IPO) is conducting its own consultation on the post-Brexit UK designs framework, again driven by the need for simplification and modernisation. The UK IPO will certainly take note of the EU’s proposals before deciding what its own changes will look like. For example, it is hoped that the UK will also follow suit regarding some of the modernisations for instance the updated requirements for the representations of designs.

It is worth noting that the proposed changes do not reflect a significant divergence from the UK designs regime (which is still largely based on the EU regime). For example, the UK already has administrative invalidity procedures and a regime for spare parts that is in line with the proposals.

What should IP lawyers be advising their clients in light of the proposals?

The broadening of the scope of designs and the means of representing designs to include dynamic views is to be welcomed by clients who cannot adequately represent their designs using the current static method. In addition, those with dynamic Graphical User Interfaces (GUIs) or virtual designs that will play an important part in a future Metaverse presence should embrace the changes and take advantage of the opportunities to register their designs for the future. The fee reductions and administrative simplification should also help with this.

Those in the automobile and spare parts industry will certainly be keeping a track of the relevant changes and the opening up of the market in certain jurisdictions. In particular, they should note that the legislation specifically codifies the requirement previously set out in case law that those who wish to benefit from the exception need to ensure that they notify customers about the origin of the product so they can make an informed decision between competing products.

Finally, 3D printers and platforms need to ensure that they are not copying or distributing files aimed at producing design infringing products.

Further consultations are planned before the legislation is enacted.

This article was first published on LexisNexis.