Why is design legislation being updated at EU level?
The current designs legislation package is more than 20 years old. Both the Council and the European Commission have stressed the importance of modernising the design protection regime to maintain competitiveness in the EU and to make design protection more appealing for individual designers and businesses, particularly SMEs. The new rules also aim to address the challenges of new technologies in the digital world (for example, by protecting against unauthorised copying of protected designs via 3D printing).
What has happened so far in the process?
The Commission has been considering modernising the design framework for the last nine years. In 2020, it conducted an extensive evaluation, which concluded that the existing legislation was broadly fit for purpose, but some areas could be improved for the benefit of designers in the future world. The evaluation also noted that the registration procedure was overly complex and that there could be enhanced procedural unity between Member States.
On 10 November 2020, the Council called for the Commission to present proposals to revise current design protection legislation to deal with these issues and these were published on 28 November 2022 in the form of a new Regulation (EC) 6/2002 and Directive 98/71/EC. The stated aims were to make the system ‘quicker, cheaper and more predictable’.
Read more about the Commission’s proposed changes in News Analysis: Intellectual property—European Commission’s proposed changes to the EU designs regime.
Almost a year later, on 25 September 2023, the Council (representing the Member States) adopted its position on the Commission’s proposed design protection legislation.
What are the key amendments proposed by the Council of the EU in its general approach to the package of legislation originally proposed by the Commission?
While the Council supports the main objectives of the revised design legislation package, the Council has introduced several ‘improvements’ to the Directive and Regulation:
Future technological developments
The Council has revised the definition of ‘product’ in both the Regulation and Directive to make it fit for the digital age and for future technological developments. It now refers to a product in potential ‘non-physical form’ as opposed to a digital form.
Simplified representation requirements
Presently, in order to get a design registration on a particular date, applicants must file a representation of the design for reproduction, which permits all details of the subject matter for which protection is sought to be clearly distinguished. The Council proposes simplifying this requirement so that the design can still be registered on that date, provided that the representation of the design is sufficiently clear.
Flexible deferment system
The Council has suggested amending the deferment system so that applicants can postpone publication of their designs for up to 30 months (instead of 30 months only) from the filing or priority date. Design right holders can ask to stop the deferment and to publish the design as opposed to having to wait until the end of the deferment period. Member States may also provide that their office will only publish the registered design on the request of the right holder (with payment of the publication fee being deemed to constitute that request). This provides designers with more flexibility because they can choose when to publish their design.
A new non-registrability and invalidity ground - improper use of symbols of public interest
The Council has clarified that Member States can provide for specific grounds for non-registrability and invalidity, to prevent the improper use of symbols of public interest in the state concerned. In particular, Member States can prevent the improper registration and misappropriation of elements belonging to cultural heritage of national interest, including artifacts, handicrafts, costumes, monuments and groups of buildings.
Cumulative designs and copyright protection
In its proposal, the Commission confirmed the cumulative protection of registered designs and copyright. The Council has now clarified that this applies where the requirements of national (not Union) copyright laws are met.
Extending the transposition period
The transposition period has been extended from 24 months (suggested by the Commission) to 36 months. This is to give Member States more time to take the necessary measures to implement the new legislation.
What should IP lawyers be advising their clients in relation to next steps?
Designers and IP lawyers should note that the Council’s ‘general approaches’ are not final positions but form the basis for negotiations with the European Parliament. The Parliament still needs to adopt its position, and then the Council and the Parliament will negotiate a compromise to finalise the wording of the legislation. Given this, there may still be further changes to the proposals and designers and their IP lawyers should continue to keep a close eye on how things develop. Because the Council is asking for Member States to have three years to implement the proposed Directive into their national laws, things will still take some time.
The Council has not fundamentally changed the focus of the proposed legislation. For example, there is still a desire to broaden the scope of design protection to cover newer forms of designs using developing technologies. IP lawyers and their clients should therefore consider whether they wish to register their dynamic designs or virtual designs for the future.
Importantly, the Council has also agreed, in principle, with the liberalisation of the EU spare parts market, a change which is of real importance to the automobile and spare parts industries. Although there is still a 10-year transition period for existing designs, newer ‘must match’ spare parts will no longer be protected.
Finally, IP lawyers should be advising that designs need to respect elements of cultural heritage.
This article was first published on LexisNexis.
