Design reform reaches its finale: it is now Regulation (EU) 2024/2822 and Directive (EU) 2024/2823

Foundations for the EU design system (as of now still covered by Regulation (EC) 6/2002 for EU-wide designs and Directive 98/71/EC for national designs) were laid down in the late 1980s-early 1990s, when various groups of academics presented their proposals for EU acts on the matter. Taken upon by the European Commission, the initial design reform took several years of adoption, mainly because of controversies surrounding design protection of spare parts.

Around 2015, the European Commission began work on updating the legislative framework and preparing drafts of a new Directive and a new Regulation. In 2015-2016, the European Commission published an economic and a legal review of the then current design law. Both studies stated that the main provisions of the two design acts were still relevant and met the modern challenges. Considering issues with interpretation of some of the key design notions, authors of the legal review also proposed to codify certain interpretations of the Court of Justice of the European Union (CJEU), such as the definition of the informed user.

In 2022, the Commission published its proposal for a new Design Regulation and a new Design Directive [commented by The IPKat here]. The adoption of the two acts went rather smoothly, so most of the text still resembles the original Commission’s proposal.

First, the “Community design” from Regulation (EC) 6/2002 (that is, pre-Treaty of Lisbon) has finally become “European Union design”. Though minor as it may seem, the “Community trade mark” changed its naming almost ten years ago.

The two legal acts embrace technological advances and broaden the scope of design law also to cover virtual products (such as the ones found in virtual reality games or metaverse).

Under the new definition, “design” includes movement, transition or any other sort of animation of features that can contribute to the appearance of designs. As for “product”, the new definition means “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a non-physical form”.

It is true that the European Union Intellectual Property Office (EUIPO) was already allowing static digital designs by ways of its Guidelines. Now animated digital designs will also be allowed for registration.

The EU Design Package clarifies a long-standing doubt as to whether design features of a product have to be visible when in use. Based on the premise that visibility is indeed required, the General Court denied design protection to a chocolate filling of cookie (T-494/12). Now Recital 13 Regulation and Recital 16 Directive expressly discard the general requirement of visibility. Accordingly, visibility is only required for component parts of complex products.

Directive (EU) 2024/2823 also includes a new optional ground for non-registrability of designs. Under Art. 13(3), EU Member States may provide that a design is to be refused registration where it contains a total or partial reproduction of elements belonging to cultural heritage that are of national interest.

The national transitional period for deciding on the spare parts protection is finally over, as Art. 19 Directive introduces a repair clause (already contained in the previous Design Regulation, but not in the Design Directive). Accordingly, design protection is not conferred to component parts whose appearance is dependent on the appearance of the complex product concerned (“must-match” spare parts). Following the CJEU ruling in C-397/16, consumers are to be duly informed of the origin of the product to be used for repairing the complex product.

For national systems that provided design protection to spare parts before 8 December 2024, Member State shall continue until 9 December 2032 to provide that protection for designs for which registration has been applied for before 8 December 2024.

The EU Design Package introduces a new exclusive right to combat illegitimate 3D printing. Under Art. 19(2) Regulation and Art. 16(2) Directive, the right holder may prohibit creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product in which the design is incorporated or to which the design is applied.

While at the moment of preparing the revision the at-home 3D printing looked like the next big challenge for the right holders, it now seems that the home usage of 3D printers has not taken off.

After a similar reform for trade marks and for geographical indications, design owners may now enforce their design rights over products that are moved in transit through the EU (think a cargo ship transporting freight from India to Argentina with a transshipment in Rotterdam). This Kat thinks this does not sit well with the territorial scope of IP rights, but how is she to judge?

Following the EUIPO model for invalidity proceedings, EU Member States have the option of introducing an administrative procedure for declaring designs invalid in front of the competent national office, before turning to courts. Unlike what occurred with trade marks, for designs this is only an option and not a mandatory step for EU Member States.

Hidden towards the end of Regulation (EU) 2024/2822, the Design Package will also significantly clarify the rules applicable to the first disclosure of a design.

In its original wording, Regulation (EC) 6/2002 chose the so-called “relative” standard for design disclosure: for a design to be deemed to have been made available, the event of disclosure could take place anywhere in the world, but it should reach business circles that operate within the EU (think of Italian designers attending the Shanghai fashion week).

In the wake of EU enlargement in 2004, a new article 110a was added, which, under its paragraph 5, stated: “[…] a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design.” This was done to regulate situations where a design would be made public in, for instance, Poland in 2003 (prior to its entry into the EU), then upon the EU enlargement the right holder would claim rights to an EU-wide unregistered design.

However, this clause gave rise to confusion: certain national courts interpreted it as meaning that an act of making available that occurs outside of the EU does not constitute a valid disclosure. This even gave rise to a request for preliminary ruling in C-728/19, which was subsequently withdrawn.

Clarifying this clause was important, especially in the aftermath of Brexit, as it was affecting the rights of EU designers who would choose to first showcase their work in the UK. The clause has now been deleted altogether.

Both acts will enter into force on the twentieth day following their publication in the Official Journal. Regulation (EU) 2024/2822 will be applicable from 1 May 2025. For national design laws, Member States will have until 9 December 2027 to transpose Directive (EU) 2024/2823. In the meantime, policy-makers are already aware that new challenges are lying ahead in the wake of applications for designs, generated by Artificial Intelligence.