The new EU design directive (2024/2823) and EU design regulation (2024/2822), proposals for which were first issued by the European Commission in 2022, were published on 18 November 2024 and have come into force as of 8 December 2024.
EU Member States have 36 months to transpose the directive while the regulation will apply 4 months after coming into force. This means the new directive must be implemented by 9 December 2027 while the majority of the Regulation will apply from 1 May 2025. However, in relation to the 'repair clause' specifically, the directive provides for a transitional period to 9 December 2032 during which applications for design registrations submitted prior to 8 December 2024 will continue to be protected.
Key changes
The legislation, according to the European Council's press release, aims to improve industrial design protection to reflect modern digital design practices including the increased adoption of 3D printing technologies. It brings about a number of changes, highlights of which are as follows:
- A broader definition of 'Product' to include "any industrial or handicraft item" excluding computer programs, no matter whether they take a physical or non-physical (e.g. digital) form. This is said to include "spatial arrangements of items intended to form an interior or exterior environment", an example of which would be shop layouts or perhaps designs of virtual environments.
- A broader definition of 'Design' to add "the movement, transition or any sort of animation" of the features of the whole or part of a product, which will have the effect of encompassing digital designs and visual effects more broadly.
- Designs can now be represented in any form of visual reproduction (including not just in static, but also dynamic and animated, forms) such as in photographs, videos, computer models and drawings.
- The introduction of new acts of infringement: "creating, downloading, copying and sharing or distributing to others any software or medium which records the design" for the purpose of reproducing an infringing product which has the effect of covering 3D printing.
- The 'repair clause' excludes design protection for component parts of complex products (e.g. cars) where the design of those parts depends on the appearance of that complex product and where those parts are solely used for the purpose of repairing and restoring that complex product to its original appearance.
- Other than in relation to component parts for a complex product, design features of a product generally no longer need to be visible at particular times and in particular situations in order to qualify for protection. An application for design registration need only contain a "sufficiently clear representation" enabling determination of the subject matter for which protection is sought.
- Applicants will be permitted to concurrently file multiple (up to 50) designs in an application covering different Locarno classes, whereas previously 'unity of class' was required. This will have the effect of discounting initial registration fees since designers will be able to file for multiple designs in relation to different products in one application.
- EU Member States will have the ability to refuse registration of designs on the grounds that they misappropriate (whether totally or partially) elements of cultural heritage that are of national interest (such as artefacts, national dress, crafts etc.). There will also be the possibility of introducing a ground of invalidity for designs falling under this which have already been registered.
- The legislation now affords protection against the transportation of counterfeit goods through the EU from non-EU countries, even where the goods are not going to be sold within the EU.
- In an effort to align design legislation with the existing copyright regime, third parties are now permitted to use protected designs (without the owner's consent) for the purposes of comment, critique or parody.
Simultaneous disclosure
Though many articles and commentary have been published in respect of the above key changes, another (lesser reported) change made by §129 of the new EU design regulation has caught our attention.
Article 11(1) of the antecedent regulation (6/2002) provided that unregistered Community designs gain protection for three years "as from the date on which the design was first made available to the public within the Community". The disclosure must be made such that "in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community". Article 110a(5) added that "[p]ursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design".
Under that legislation it was unclear whether designs first disclosed outside the EU, for example at an international trade fair in a non-EU country, in circumstances where those individuals/businesses operating in the relevant sector within the EU would see the first disclosure, would qualify for unregistered Community design protection.
In the Gebäckpresse case (I ZR 126/06) the Bundesgerichtshof (being the highest court in Germany) interpreted the provisions to mean that if a design is not physically disclosed first in an EU country, an unregistered Community design would not be created. Unfortunately, CJEU guidance was never obtained because, although the UK Court referred a question on the issue in Beverly Hills Teddy Bear Company v PMS International Group, the case did not end up proceeding.
The issue around interpretation of these provisions has been particularly problematic for UK designers post-Brexit because first disclosure in the UK may no longer give rise to unregistered Community design right protection in the EU, depending on the interpretation of this provision. Similarly, first disclosure in the EU would mean that designers would not obtain the equivalent supplementary unregistered design right protection in the UK (for which first disclosure in the UK is required). Designers have therefore faced difficult decisions about when and where new designs are disclosed, and by extension the territory in which they can benefit from unregistered design protection. Many designers from the UK and EU may simply not be aware of the issue, and may be disclosing their designs in whatever is the most commercially suitable way meaning, for example that some designs are only likely to be protected in the jurisdiction that happens to host the first trade show of the season. This cannot have been intended by the legislature in either jurisdiction.
Many have taken the cautious approach of simultaneous disclosing their designs in both territories (for example by first making the design available online, or at a public event which is broadcasted live in the other territory). Whether this approach works is a question that the courts will, in time, have to decide. Nevertheless, to date, it has been unclear whether that method is permitted in either the UK or EU in order to qualify for both sets of rights, or whether 'first disclosure' is required in one specific territory to the exclusion of all others in order to qualify for the associated unregistered design protection in that territory. The ongoing uncertainty has meant that designers have been at risk of not getting the protection they need.
The new EU design regulation has now deleted of the wording in art. 110a(5) quoted above. Whilst the Explanatory Memorandum did not give context to the change, the deletion may signify acceptance of disclosure physically made outside the EU (provided the design was made available to the public in the EU in accordance with Article 11 of the old legislation) and/or may indicate acceptance of simultaneous disclosure in the EU and elsewhere in order to qualify for unregistered Community design protection. Given that many of the changes discussed in this article seek to modernise the legislation for the digital age, and most designs are now disclosed online (and therefore simultaneously across multiple jurisdictions), it would make sense if the European Commission intended to accept simultaneous disclosures as qualifying for protection.
Even if that is the case, the challenge of being a designer in a post-Brexit world is that the EU's and UK's separate legislative bodies are making unilateral decisions (and not at the same time) in relation to their respective territories, but those decisions still have an effect upon the other. Despite the separation between the territories, an open dialogue and consideration of the other's legislative rules remains important.
The UK Intellectual Property Office is currently reviewing the UK designs law regime and we anticipate the launch of two consultations in the coming months. One of these will deal with the issue of simultaneous disclosure, and it is our hope that decisions made following the consultations will take note of the apparent softening of the EU position.
Ultimately, no matter the positions taken, clarity either way will prevent designers from relying on a potentially erroneous state of affairs so that they can make informed decisions about when and where to disclose their designs and whether to seek registration in the event they launch their designs in different territories.
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