In early 2024, the European Parliament formally endorsed major reforms to the EU design system, and it is expected that the European Council will soon formally approve the changes.
Once approved, the regulation will enter into force 20 days after publication, and apply four months after publication.
Sometime in the first half of 2025, the EU design registration system will look very different, and U.S. companies operating in the EU should know about this new legislation before it goes into effect.
Since its inception in 2003, the pan-EU design registration system has been extremely popular, with the European Union Intellectual Property Office registering more than 1.8 million designs — approximately 100,000 per year — for rights holders worldwide. But big changes are afoot for this system.
Name Change and New Symbol for EU Designs
The registered community design is undergoing a significant rebranding as part of the EU design rights system reform. It will soon be called an "EU design" or a "registered EU design," replacing "community design" and "registered community design," the current terms.
This change reflects the evolution of the EU and its IP framework since the system's inception in 2003, and adopts terminology aligned with the Treaty of Lisbon and Regulation (EU) 2017/1001 on the EU trademark. Along with the name change, a new symbol will be introduced: Ⓓ. This symbol will serve as a visual indicator of registered EU designs, similar to how ® and " function for trademarks.
The rebranding is more than just cosmetic — it represents a modernization of the EU design protection system. When the registered community design was first introduced, it revolutionized design protection in Europe by allowing businesses to secure rights across all EU member states with a single filing. Since then, the system has grown to process nearly 100,000 designs annually from applicants located around the world, and the use of "EU" in the title showcases the EU's IP landscape. The objective behind the changes is to simplify the registration system and update the regulatory framework to reflect new technologies on the market.
EU Application Filing Mechanics
The reforms bring several practical changes to the application filing process, expanding the scope of protection to include new technologies and further streamline procedures, as follows.
Scope of Protection
The definitions of "design" and "product" are being broadened to encompass new types of designs, including animated designs, graphical user interfaces and digital twins. This expansion is particularly significant for digital and tech products, reflecting the evolving nature of design in the 21st century.
The reforms also address the growing field of 3D printing. Activities related to creating, downloading, copying and sharing, or distributing to others any medium or software that records the design for the purpose of enabling a product to be made, for example by 3D printing, will be explicitly prohibited, closing a potential loophole in design protection.
Representation Requirements
New rules on design representation will modify the requirements for representation of a design so that it is adaptable to technical advance in the visualization of designs. This language requires a sufficiently clear representation of the design, permitting the subject matter for which protection is sought to be determined. Practically speaking, this means that applicants will be able to file their representations, i.e., figures, in more file formats. This change aims to ensure that designers can accurately communicate the unique aspects of their creations, particularly in emerging technologies.
Multiple Classes in a Series Application
Rules on multiple design applications are becoming looser, making it easier and more cost-effective to file multiple related designs. Under the new system, multiple designs will no longer have to be in the same class. This means that applicants can include a larger variety of designs in a single series application. However, moving forward, the application will be limited to 50 separate designs.
Targeted Adjustments to Fee Structure
Some fees will be lower, such as filing fees, and some fees have been removed altogether, such as transfer of rights. These changes are aimed at making EU designs more affordable for small and midsize enterprises and individual designers. However, the later annuities, due every five years to maintain your registration up to 25 years, have increased significantly.
Currently, the renewal fees gradually increase from €90-€180 ($98-$197) from the first annuity at year 5 to the fourth annuity at year 20. Under the new fee structure, the renewal fees will increase more steeply from €150-€700. For some industries, such as fashion, these changes will likely not be as significant as for those industries that regularly renew a large portfolio of registrations for the full 25-year period.
Third-Party Manufacturers Spare Parts Exception
The reform package introduces a repair clause, which creates an exception to EU design rights for spare parts. This clause will allow third-party manufacturers to produce spare parts for repair purposes. The changes allow the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product that constitutes a component part of a complex product upon whose appearance the protected design of the component part is dependent.
However, the manufacturer or the seller of a component part of a complex product must inform consumers regarding the commercial origin and the identity of the manufacturer of the product to be used for the repair of the complex product, so that an informed choice may be made between competing products that can be used for the repair.
This change will have a substantial impact on the aftermarket parts industry, particularly in the automotive sector. The clause aims to strike a balance between protecting design rights and fostering competition in the spare-parts market. However, it represents a potential limitation on design right-holders' exclusivity, especially for companies that rely on aftermarket sales of their own replacement parts.
The introduction of this exception follows debates and discussions that have been ongoing in the EU for several years. It reflects a policy decision to prioritize consumer choice and market competition in the repair and maintenance sector. U.S. companies with significant aftermarket markets operating in the EU will need to carefully consider how this change affects their business models and strategies for design protection.
Law in EU Member States
Changes to the directive on the legal protection of designs will also require EU member states to implement the changes described, as well as update national provisions to become more harmonized with the revised EU regulations.
A major procedural change is the requirement for all EU member states to offer administrative design invalidity procedures. This new system provides a potentially simpler and more cost-effective way to challenge national design registrations compared to court proceedings, potentially lowering the barrier for smaller entities to challenge questionable design registrations.
This change is significant for both design right-holders and potential challengers. It offers a new strategic option for addressing potentially invalid designs, at a potentially lower cost.
EU member states will also need to provide an applicant with the option of requesting deferment of the publication of a design application for a period of 30 months from the date of filing the application.
Implementation Timeline
The various provisions of the EU design rights reform have different implementation timelines over the next few years. While the exact dates for all changes are not yet finalized, some key points in the timeline include the following.
- The changes to the regulations are likely to take effect in early 2025, four months after the new European design regulation comes in to force.
- The changes required by the amended directive in the member states shall be brought into force within 36 months of the directive entering into force. Because the member states will likely implement their national changes at different times during the 36-month period, it is expected that there may be more differences in member state laws in the near term.
- The introduction of the repair clause for spare parts will likely have a transition period to allow industries to adapt. EU member states will be provided eight years to implement these changes.
Conclusion
It is crucial for U.S. companies doing business in the EU to analyze how these changes might affect them. As the implementation progresses, staying informed about the specific dates and details of each change will be essential for effective IP management in the EU market. It should also be noted that once these changes come into effect, EU design registration procedures will depart from those in effect in the U.K.
Originally published by Law360
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