Comprehensive protection for the external appearance of products in the virtual world, 3D printing, and the spare parts market as well.
Anniversary, a new legal environment, simplified registration procedure – a few examples of developments affecting design protection that hopefully will breathe new life into businesses’ innovation efforts and, at the same time, make legal protection more accessible for the products they develop. In our article, we present the current developments in the field of design protection.
On 1 April 2023, the European Union Intellectual Property Office (EUIPO) celebrated a significant anniversary, as the first Community design was registered at the Office exactly 20 years ago. A calculator from the Japanese brand Casio is the pioneer of Community design protection.
Design protection safeguards the appearance of a product. Industrial design is what makes a product attractive. The visual appeal of products is one of the most important factors by which consumers decide which product they prefer over another. Well-designed products, therefore, provide significant competitive advantages for manufacturers in the market. In order to promote innovation and new product design in the digital age, there is an increasing need for accessible, durable, efficient, and consistent legal protection for designs.
The EUIPO (European Union Intellectual Property Office) summarized the past 20 years of community design protection in a short blog post, and from there, we can learn that since the protection of Casio calculator design, nearly 1.8 million applications have been submitted to the Office, and approximately 100,000 Community Design registrations are recorded by the EUIPO every year. However, beyond the numbers, they also prepared something else for the anniversary and made a simplified registration platform available to applicants. This new interface significantly simplifies the application process, and at the end of it, we can obtain our registered design within as little as 2 days.
The simplification of the application process aligns with the EU’s objectives to modernize, expedite, and make design protection more accessible within the Union.
As the anniversary shows, the European system for the protection of industrial designs is over twenty years old. The regulations governing industrial designs are primarily governed by Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 and Council Regulation (EC) No 6/2002 of 12 December 2001, and significant amendments have not been made to these regulations. The EU emphasizes the importance of innovation on many platforms, but in several aspects, legal regulations do not keep pace with the innovations of the digital age and do not adequately address the challenges arising from the spread of new technologies.
Modernization is therefore inevitable, and to achieve this, simplifying the registration process alone is not sufficient. Therefore, last year, the Commission adopted a package of two proposals to amend EU legislation on design protection, the aforementioned directive and regulation.
The most important innovations proposed , aimed at supporting innovation and continuous product design development, can be summarized as follows:
European Union Design Instead of Community Design:
The proposals seek to unify the terminology in the regulations to refer to registered designs obtained through registration as “European Union designs” instead of “Community designs.”
New Definitions in Design and Product Concepts – Embracing the Virtual World:
The proposed changes expand the definition of designs to include movement, transitions, or any other type of animation that may contribute to the appearance of designs, especially in the case of non-physical objects. The definition of a product is also expanded to include industrial or handicraft articles, regardless of whether they are embodied in physical objects or digital form.
Removal of Visibility Requirement:
Currently, designs are required to be visible during normal use of the product. The new proposals eliminate this general visibility requirement. However, complex products still require the elements of their components to be visible during normal use to obtain protection.
“Repair Clause” – Regulation of Spare Parts:
One significant amendment proposal pertains to spare parts. The proposals introduce a “repair clause” at the EU level in the Design Directive, which promotes fair competition in the spare parts market. This is especially important in the automotive repair sector and aligns with the findings in the Acacia case, where the European Court of Justice ruled that the “repair clause” does not apply if the spare part does not match the original part in terms of color or dimensions or if the appearance of the complex product has changed since it was placed on the market. Manufacturers also have a duty of care towards end-users, requiring them to provide adequate information accompanying the sale of spare parts to clarify that the design is not theirs and is solely for the repair of the complex product to restore its original appearance.
Principle of Accumulation:
Copyright Protection and Design Protection Relationship: The proposals reaffirm the position of design protection concerning copyright and explicitly confirm the principle of accumulation. This means that design protection and copyright protection can coexist on a product, and they do not exclude each other, provided that the requirements for both forms of protection are met.
Mandatory Grounds for Nullity:
Procedural changes include the transformation of the previously discretionary grounds for nullity (e.g., use of a distinguishing sign in a subsequent design or unauthorized use of a design protected by copyright) into mandatory grounds. National laws must now provide for these mandatory grounds for nullity to ensure consistency with the EU design system.
Reduction of Application Fees:
Lastly, the Commission proposes reducing the fees for design compared to the fees currently specified in the Fees Regulation. This makes access to European Union design protection more affordable, especially for SMEs and individual designers who typically file fewer design applications than larger businesses.
The proposals thus foreshadow significant changes in the regulatory framework for design protection. However, several intellectual property-focused blogs draw attention to a notable omission: surprisingly, the drafts do not suggest the codification of the concept of the “informed user,” which is crucial in assessing the individual character of a design and has already been codified during the 2016 legal revision for the sake of legal certainty, including in trademark and copyright law reforms.
The Commission has accepted the proposals, but they will only come into effect after several years. Initially, the proposals will be presented to the European Union Council and the European Parliament for adoption under the ordinary legislative procedure. Following the adoption of the proposals, EU member states will have two years to transpose the new rules outlined in the directive into their national laws. Most of the amendments in the regulation will take effect shortly after their entry into force (3 months), while others will only apply after the adoption of necessary delegated and implementing acts (18 months after entry into force).
So, while we may have to wait for the concrete implementation of these proposals, we can already take advantage of the simplified registration process on the EUIPO platform, and we can expect that our design protection obtained through the easier registration process will thrive in a more flexible and innovative regulatory environment in the next 20 years.