November 2024
by Andreea Bende and Narcis Codori
Context
Following the adoption of a legislative package by the European Council on 10 October 2024, two new legislative acts were published in the Official Journal of the European Union amending the EU design laws, on 18.11.2024.
According to an official statement of the European Council[1], the new laws aim to improve the protection of designs and to align the legislation with the technological and industrial progress, given the implications brought by the digital age/transformation and the transition to 3D printing technology.
The new laws bring a series of significant changes and clarifications, which can be very useful for the aftermarket spare parts manufacturers, digital content creators and many others.
On a more specific level, the legislative package includes two new pieces of legislation – the Directive (EU) No. 2024/2823 on the legal protection of designs (the “Directive“) and the Regulation (EU) No. 2024/2822 amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 (the “Regulation“).
The new laws will reform the old regulatory framework: the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and the Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.
This article presents some of the most changes brought by the Directive and Regulation[2], without however providing an exhaustive presentation of all the legislative novelties adopted.
The changes presented below can be found not only in the body of the new Regulation, but also in the body of the new Directive. Thus, the novelties concern both the EU design legislation and the national design laws of the member states. The new Directive comes to ensure the approximation of the laws of the member states, so as to bridge the existing gaps between the level of protection granted to designs at a national level, in each of the member states.
Key changes
- Novelties brought both by the Regulation and the Directive
1.1. The amended definitions
The definitions of ‘designs’ and ‘goods’ are amended by the addition of express references to dynamic elements and elements which are not materialised in physical form.
According to the Regulation, ‘designs’ are defined as “the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features”[3].
At the same time, the “product” will mean “any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form (…)”[4].
As a consequence of these changes, movement, transition or any kind of animation of the external appearance of a product will be able to be recorded[5] as a design. Also, according to the Directive, designs shall be represented in any form of visual reproduction, including drawings, photographs, videos, computer imaging or computer modelling.
It therefore becomes obvious that graphic representations, whether static or dynamic, purely digital elements, 3D printing models, graphical interfaces or animations will also be able to acquire protection as EU designs or, following the transposition of the Directive into national laws, as national designs.
1.2. Change of terms
The term ‘Community design’ is dropped and replaced by the term ‘EU design’, the amendment being intended to align the wording with the wording in the field of EU trade marks.
1.3. Amendments to the object of protection
The protection conferred by law to designs is clarified, with the new Regulation and the Directive clearly stating that protection shall be conferred[6] for those features of appearance of a registered design which are shown visibly in the application for registration.
1.4. The owner of the design will be able to oppose new acts of infringement
The owner of the design may also oppose the acts of creating, downloading, copying, sharing or distributing any medium or software that registers the design, for the purpose of realization and marketing or subsequent use of a product that incorporates the protected design.
These amendments should make it easier for the holder to oppose counterfeiting deeds that take place in online.
1.5. Multiple applications
Another element of novelty is brought both by the Regulation and the Directive in the case of multiple applications: the requirement that all the products in which the designs are intended to be incorporated or to which they are intended to be applied to belong to the same class of the International Classification for Industrial Designs is abolished.
As a consequence, one will be allowed to seek the registration of several designs not falling in the same class of the Locarno Classification all at once, by filing a multiple application.
1.6. Limitation of rights conferred by a design
The scope of the acts of use that do not require consent of the design holder is extended.
In addition to the acts of use already permitted by the old legislation (e.g. use for experimental, citation or teaching purposes), protected designs may also be used by third parties, without the consent of the owner, for the purposes of comment, critique or parody.
These amendments aim to align the design legislation with the already existing copyright provisions.
1.7. The repair clause
The “repair clause” becomes permanent (it was also part of the old regulation, but on a transitional basis), and its purpose is to exclude from protection the designs which constitute component parts of complex products and that are used for the sole purpose of the repair of that complex product so as to restore its original appearance.
The repair clause does not concern spare parts of any kind, but only those component parts whose appearance depends on the design of the complex product and which are used strictly to restore the original appearance of the product.
For example, in the case of car spare parts, the manufacturer of the original parts (holder of the designs of the original parts) will no longer be able to oppose the production and marketing of spare parts that transpose an identical design (or that do not produce a different overall impression) by aftermarket parts dealers, when such parts are strictly dedicated to the restoration of the original appearance of the car.
In other words, the clause concerns ‘must-match’ spare parts (such parts may be, for example, aftermarket car doors, identical in appearance to the original doors) and the purpose of the clause is to prevent the emergence of a monopoly on the spare parts market by protecting both aftermarket manufacturers and sellers and consumers alike by stimulating competition.
Manufacturers and sellers of parts will be required, however, to “properly inform” consumers about the commercial origin of the parts and about the identity of the manufacturer, so that the consumer can make an informed choice between competing products that can be used for the repair.
According to ECAR (European Campaign for the Freedom of the Automotive Parts and Repair Market[7]), in 2023, the national laws of the member states were still not harmonized on this topic[8]. Some of the member states, including Romania, still protect design rights on spare parts of this kind.
Directive (EU) no. 2024/2823, however, comes to liberalize the market, harmonizing the national legal frameworks on this matter, by the implementation of the “repair clause”.
IMPORTANT: However, the transposition of the Directive will not take place immediately. In states where national laws do not already include a repair clause, national laws will be able to continue to provide, until 9 December 2032, for the possibility of enforcing design rights, provided they were filed for registration before 8 December 2024, on must-match spare parts.
- Novelties brought by the Directive
2.1. Grounds for non-registrability/invalidity in relation to designs reproducing elements of cultural heritage
Member states will have the possibility to provide that registration of a design is to be refused if it contains a total or partial reproduction of elements belonging to cultural heritage that are of national interest.
Also, member states will have the possibility to provide for a ground of invalidity in relation to such designs that are already registered.
2.2. Right of prior use
Under the Directive, a right of prior use shall exist for any third party who can establish that, before the date of filing of the application, or, if priority is claimed, before the date of priority, the third party has in good faith commenced use within the member state concerned or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered design right, which has not been copied from the latter.
Such right shall entitle the third party to exploit the design for the purposes for which its use has been affected, or for which serious and effective preparations had been made, before the filing of the application or priority date of the registered design right.
2.3. Grounds for invalidity
New mandatory grounds for invalidity become binding on the member states.
For example, under the old Directive no. 98/71 member states could choose whether or not to provide for grounds of invalidity based on the prior existence of a protected distinctive sign. Once with the adoption of the new Directive, that choice disappeared.
According to the new Directive, the member states no longer have the possibility, but the obligation to provide for the invalidity grounds provided for in Art. 14 para. (1) letters f) and g) of the Directive – i.e. the invalidity grounds based on the prior existence of a protected distinctive sign or on the prior existence of a copyright protected work.
The purpose of the Directive is to harmonize, at the level of member stats, the conditions for acquiring and maintaining protection in respect of national designs.
New amounts for fees imposed by the Regulation
The Regulation brings changes to the amounts of the registration and renewal fees for EU designs, as detailed in its Annex 1.
Thus, the registration application fee will be in the amount of EUR 350, while renewal fees will differ: the first renewal will be charged with EUR 150/design, the fee progressively increasing up to the amount of EUR 700/design for the fourth period of renewal.
The Annex also provides for other fees detailed in the document.
When will the Directive and Regulation enter into force
The new legislative acts will enter on the 20th day following their publication in the Official Journal of the European Union (18 November 2024), but will apply later:
- The Regulation in its new form shall apply from 1 May 2025, and the amendments presented above shall apply starting this date. However, many other provisions in the Regulation shall apply from 1 July 2026.
- The Directive shall be implemented by the member states into national law by 9 December 2027. At the same time, several changes (other than the changes laid out above) will apply starting 9 December 2027.
By way of exception, in the case of the repair clause, the Directive sets a transitional period until 9 December 2032, within which the designs for which registration was sought before 8 December 2024 may continue to be protected against the use of must-match spare parts.
Conclusions
In line with the purpose officially stated by the Council, the amendments adopted and presented could help anyone who seeks, for example, to obtain design protection in relation to dynamic advertising materials, graphical interfaces, 3D sketches or video game graphics.
Without wishing to entail an exhaustive list, we believe that the presented novelties may be of interest especially to digital content creators, such as companies in the IT area, mobile app developers, web designers or 3D design engineers.
The new provisions are also relevant for the manufacturers of aftermarket spare parts, as the market in which they operate will be liberalized once the clause enters into force in each member state.
[1] https://www.consilium.europa.eu/en/press/press-releases/2024/10/10/intellectual-property-council-gives-its-final-approval-to-the-designs-protection-package/
[2] Regulation (EU) 2024/2822 can be accessed at https://eur-lex.europa.eu/legal-content/RO/TXT/?uri=CELEX%3A32024R2822.
Directive (EU) 2024/2823 can be accessed at https://eur-lex.europa.eu/legal-content/RO/TXT/?uri=CELEX%3A32024L2823&qid=1731931697330.
[3] See the new definitions introduced by point 9 of the Regulation.
[4] See the new definitions introduced by point 9 of the Regulation.
[5] Subject to the fulfillment of the requirements imposed by the Regulation or, as the case may be, by the Directive, in order to acquire protection.
[6] Subject to the cumulative fulfilment of the legal conditions for obtaining design protection.
[7] According to the data available on the https://www.ecar-alliance.eu/ website, ECAR is “an alliance of 5 independent EU organisations representing vehicle parts producers and distributors, a large cross-section of SMEs as well as the interests of 285 million motoring consumers in the European Union.”
[8] More information can be accessed at https://www.ecar-alliance.eu/the-repairs-clause/.
An extensive article on this topic is available, in Romanian HERE.
For more details, please get in touch with either Ana-Maria Baciu, Andreea Bende or Narcis Codori
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