In a significant step towards modernizing the European Union (EU) design protection system, the Council and the European Parliament reached a provisional agreement on December 5, 2023, to modernize Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs and Directive 98/71/EC on the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (“EU Design Protection System“).
The EU Design Protection System has been in force since 2002 and is more than 20 years old. The rules of the game in this area have evolved significantly in recent decades, with the consolidation of the digital world and the emergence of cutting-edge technology such as 3D printing. It has to be also taken into consideration that design-intensive industries represent almost 16% of GDP and 14% of all jobs in the EU. Therefore, it is not surprising that on 10 November 2020, the Council asked the Commission for proposals to modernize the EU Design Protection System.
On 28 November 2022, the European Commission, aware of this growing need, published a package of measures with two proposals to modernize the EU Design Protection System (i.e. Regulation No 6/2002 and Directive 98/71/EC). The aim of this modernization is to adapt industrial designs protection to the digital age, correct current inaccuracies in the legal texts and introduce some other provisions in an attempt to adapt to current business needs.
Although the texts of the provisional agreement or the Regulation are not yet available, the main elements of the agreement would be the following:
- Scope of protection. As outlined, definitions of “designs” and “product” contained in the legislation currently in force have been amended in a clear attempt to cover the digital and 3D printing scenario. On the one hand, the wording of the “design” definition is likely to include items such as “movement, transition or any other sort of animation of those features“; and seems to provide that a “product” can be “embodied in a physical object” or to “materialize in a digital non-physical form“, such as “spatial arrangements of items intended to form, in particular, an interior or exterior environment (…)” or “Graphic User Interfaces”, therefore crystallising the position of the European Union Court of Justice in this regard. On the other hand, modalities of infringement will also cover, under certain circumstances “creating, downloading, copying and sharing or distributing to others any medium or software recording the design“, which opens the door to a broader interpretation of the design holder exclusive right.
- Fees and EUIPO services. As for EU Designs, recitals of the Regulation suggest an increase in fees for different activities connected to EU Designs, as compared to the fees applicable to protection regimes that are exclusively national. The aim of this measure seems to balance and ensure the coexistence of national and EU Design Protection System.
- Cultural heritage. There seems to be an agreement to prohibit elements considered part of the cultural heritage of national interest from being protected as industrial designs. For the sake of alignment, the UNESCO definition of cultural heritage has been used to determine the limits of this provision, thus companies will have to review this prohibition when trying to protect a model or design of, for instance, a regional costume or any design inspired on the same.
- Repair clause. One of the highlights of the provisional agreement is the so-called “repair clause”, which aims at excluding from design protection parts that are considered to be component parts of complex products when their purpose is exclusively to restore the original appearance of the good, therefore the replacement should be the same as the original part. This being said, under the current available texts, the conditions for the application of the repair clause seem to need further interpretation.
In any case, according to research conducted by the Council of Europe, the repair clause is likely to make component parts more accessible, leading to significant savings for EU consumers. The agreement seems to provide a harmonized transitional period of eight years for the repair clause to enter into force in the European countries.
Next steps
Now that the provisional agreement is in place, the next step is for the Council and Parliament to endorse and formally adopt the agreement they have reached. Subsequently, should the text be approved at first reading, after signature of the text by the President of the Council and the Parliament, it will be published in the EU Official Bulletin and will enter into force on a date to be agreed, or by default 20 days after publication. Although this date is still uncertain, it is not expected to take too long.
Once the texts are adopted: (i) regarding the Directive, EU Member States will have three years (36 months) to adapt their local regulation to the provisions new Directive; and (ii) regarding the Regulation, the majority of the adjustments will take effect three months after its entry into force, while other amendments will have a longer period for application until the relevant implementing and delegated acts are passed, which may take additional 18 months after its entry into force.
