A New Era for Design Protection in the European Union
In contribution Dimitra Rodia, Trainee Lawyer
On November 18, 2024, the European Union reached a significant milestone with the publication of two key pieces of legislation that will reshape the design landscape: Regulation (EU) 2024/2822 and Directive (EU) 2024/2823. These new rules, following years of review and discussion, address modern challenges in design law and align EU design protection with technological advancements and evolving market needs.
So far, the EU design system has been governed by Regulation (EC) 6/2002 for the so-called “Community” designs and Directive 98/71/EC for national designs. The subsequent design reform process began in 2015, focusing on updating the legal framework to address contemporary challenges, such as the application of design law to digital products.
After several years of work, the Commission published its proposals for a new Design Regulation and Design Directive in 2022. These proposals were well-received and largely retained the key provisions of the original drafts, leading to the final adoption of the acts in November 2024.
Key Elements of the Reform
- Modernized Terminology and Scope
A significant change is the renaming of "Community Designs" to "European Union Designs (EUDs)," in Article 1 of the Regulation, accompanied by renaming "Community Design Courts" as EU Design Courts. This shift aligns the terminology with other intellectual property rights, like EU trademarks. A further addition is the introduction of the Ⓓ symbol under Article 24 of the Directive, enabling design holders to visibly mark their products as protected, similar to the ® and © symbols for trademarks and copyrights.
Additionally, the scope of protected designs has been broadened to address digital and technological advancements (Article 3 of the Regulation and Articles 2 (3) and 26 of the Directive). Designs now explicitly include dynamic elements like movement, transitions, or animations. These provisions embrace the growing prevalence of virtual and augmented reality products, ensuring that such designs are equally eligible for protection under EU law.
- Simplified Visibility Requirements
One of the most significant clarifications in the reform is the removal of a general visibility requirement for designs (Recital 13 of the Regulation and Recital 16 of the Directive). Visibility is now mandated only for component parts of complex products (Article 3(3) of the Directive), resolving inconsistencies in prior case law, such as the T-494/12 decision, in paragraph 29 of which the Court claimed that non-visible characteristics of a product, such as the filling inside a cookie, should not be considered when determining the eligibility for design protection. This change simplifies the criteria for design protection, fostering greater certainty for designers.
- Cultural Heritage Safeguards
In an effort to protect national cultural identities, the Directive in Articles 13(3) and 14(2) introduces an optional ground for Member States for non-registrability or declaration of invalidity of designs that incorporate elements of cultural heritage.
- Repair Clause
The inclusion of a "repair clause" in Article 20a of the Regulation and Article 19 of the Directive, is notable. This provision excludes from protection component parts upon whose appearance the protected design is dependent and which are used solely for the purpose of repairing the complex product to restore its original appearance. The Directive provides that designs registered before December 8, 2024, will retain protection until 2032, offering a transitional period for adaptation.
- Combating Illegitimate 3D Printing
Acknowledging the challenges posed by unauthorized 3D printing (Recital 14 of Regulation and Recital 27 of the Directive), the Regulation in Article 19(2) and the Directive in Article 16(2) grant design holders an exclusive right to prevent the creation, distribution, or sharing of 3D-printable files of their designs. This is a significant step in addressing modern infringement concerns and adapting design law to technological realities.
- Enhanced Design Disclosure Rules
The Directive in Article 6 provides clarity on the issue of design disclosure and Article 44 of the Regulation also allows applicants for EU design registration to claim priority for designs disclosed at official international exhibitions, ensuring they can file within six months of the first public disclosure.
- Protection of designs in transit
Additionally, design rights are now enforceable against goods in transit through the EU (Article 19(3) of Regulation and Article 16(3) of Directive).
- Administrative Streamlining
The introduction of administrative invalidity procedures for national designs (Article 31 of the Directive) provides a mechanism to challenge the validity of design rights on specific grounds, similarly to the EUIPO’s practices, while ensuring that only authorized parties can file such applications. Moreover, Article 34 of the Directive encourages cooperation between national offices and the EUIPO.
Implementation Timeline and Future Challenges
The Regulation (EU) 2024/2822 is set to apply from May 1, 2025, while Member States have until December 9, 2027, to transpose Directive (EU) 2024/2823 into national law.
Although the new legislative framework address many contemporary issues, challenges lie ahead. The rapid growth of artificial intelligence (AI) in design creation raises questions about authorship, originality, and protection. These emerging technologies will undoubtedly test the adaptability of the EU's design framework in the years to come.
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