In response to the digital age’s demand for creativity and innovation, the European Union has recommended a new EU designs framework to address current issues and future challenges. Through this proposal, they seek to refine existing regulations by adding clarity, enhancing definitions of key terms, and aligning them with individual country laws. If passed, the legislation could foster better protection for designs while simultaneously creating balance between legitimate interests involving intellectual property rights – all in an effort to curb counterfeiting activity worldwide.
An overview of European Design Law: Protecting Creativity and Innovation
Models and designs are integral to product artistry and creativity and can be protected by European law. Article 3 of Regulation 6/2002 outlines all the characteristics that can be used to define a design – including lines, contours, colours, forms and textures. Currently, designs and models must be novel and exhibit some degree of individuality for them to be considered protectable.
The European law on designs and models is an essential tool for protecting creativity and innovation within the European Union. Not only does it help to encourage innovation and competition by providing adequate protection to creators and businesses, but it also encourages them to invest in the research and development of new products and designs, which ultimately stimulates economic growth and job creation.
Registration of a model or design with the European Union Intellectual Property Office (EUIPO) gives the holder exclusive rights over the ornamental or aesthetic aspects of an object for up to 25 years. The European design regime also provides protection for up to three years for unregistered community designs.
To benefit from this protection, the design or model must have an individual characteristic. This implies that the general impression that the design or model gives to the informed user must be different from the general impression that pre-existing designs or models give. When assessing this criterion, it is important to take into account the degree of freedom enjoyed by the creator at the time of the creation of the design or model, since this freedom will determine whether the latter achieved a real creative performance or not. Finally, the design or model must also be considered new.
This protection allows the holder to take action against the reproduction and sale of products with an identical appearance.
Furthermore, European design law provides broader and faster protection than national systems. Once registered, a design is protected throughout the EU, obviating the need for separate registration in each member state.
Considering its importance to European economic actors, it has become necessary to adapt this system to current and future trends arising from the digital era.
Context of the changes proposed by the Commission
In November 2022, the Commission presented a proposal that is currently under negotiation. This « EU designs framework » aims to revise the regulation and directive on community designs and models and is set to come into effect by the end of the year, or early 2024.
The objective of the designs framework is to modernise and improve current provisions by removing outdated rules, enhancing legal security, and clarifying design and model rights management. As technology advances and more businesses operate online, it becomes clear that current regulations are limited and must adapt to new forms of creation to protect designers and their digital creations. This directive aims to harmonise national laws and procedures to strengthen interoperability and complement the community design and model system.
Finally, the framework would help to complete the single market for replacement parts by including into the directive a repair clause, which is similar to the one already present in Regulation 6/2002.
Key changes proposed by the Commission
The « EU designs framework’s » primary aim is to provide clarity within protection regulations. This would result in terminological alterations that replace terms such as “Registered Community Designs” with “Registered EU Designs” (REUD) and “Unregistered Community Designs” with “Unregistered EU Designs“.
Another major change introduced by the directive is the removal of protection for unregistered community designs and models at a national level. In addition, it also stipulates that protection for community designs and models only starts when they are registered in the dedicated register.
It requires visibility by conditioning the protection of UDCs on the visible character of the appearance characteristics presented in the community design registration application. During the procedure of submitting a community design, the representations must clearly identify all the details of the design or model deposited.
The Commission also highlights the possibility of combining design protection with copyright protection, as established by European case law.
The proposed changes aim to broaden the definition of designs and models to include movement, transition, or any type of animation of product features as well as the definition of products by introducing a digital component and allowing for anything related to graphic interfaces, if necessary. Accordingly, the proposed framework defines “product” as “any object, including digital products, that can be manufactured or produced in limited quantities, or that can be sold, rented, or made available on the market.”
The Commission defines the boundaries of protection and grants an exception that allows for critical and parodic use of designs and models. Conversely, it deems 3D printing a form of use that requires authorization from the design or model rights holder. Importantly, this is a continually-advancing technology that facilitates the creation of 3D objects via digital files.
In addition, the proposal introduces new provisions. Firstly, it removes the unity-of-class principle, allowing for the submission of several REUD requests in the same application, even when designating multiple classes. Secondly, it makes the repair clause for spare parts permanent. This clause provides a transitional period of 10 years to safeguard the interests of existing design or model holders if the member state allows for design or model protection for spare parts at the time the new directive comes into force. However, it will only have an immediate legal effect on future registrations. The proposed framework also permits right holders to affix a specific symbol Ⓓ, informing the public that the product is registered.
Finally, on a procedural level, the Commission proposes to make optional provisions mandatory in order to increase predictability and coherence with the EU system. « The EU Designs Framework » also establishes a presumption of validity, which should be adopted by all EU Member States. This way, the validity conditions of the title would be presumed to be met in the event of an infringement. It also allows one to request a deferral period of 30 months from the date of filing the application. Ultimately, it stipulates that all member states must provide administrative actions for nullity with respect to registered designs and models in front of national intellectual property offices.
The Commission’s proposal for this directive is justified by a legal framework that has remained unchanged since the late 1990s and early 2000s, before the internet and the rapid growth of technology. As a result, it was necessary to address certain deficiencies and gaps in the protection regime to ensure its adaptation to the digital age and, more generally, its sustainability. This reform could encourage the protection of designs and models and, therefore, applications for registration within the European Union. It will also strengthen and limit protection, with the objective of striking a better balance between legitimate interests. Ultimately, it could potentially (and surely) improve the fight against counterfeiting.
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This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.