EU design reform – A modernising proposal with sustainability goals 

The proposed EU design reform package seeks to rejuvenate, harmonise and modernise a system that was originally implemented 20 years ago. Anne-Catherine Schihin sets out its main objectives, including the green goals of the new repair clause.

The committed overhaul of the EU (Community) design and model system has its source in a communication issued by the European Commission on 25 November 2020 in which it outlined an action plan to support IP and exploit innovation within the EU.

The plan aims to reduce costs, facilitate access to protection and harmonise legal systems in the EU. As importantly, it seeks to take into account evolving communication channels, including the rise of digital media and the evolution of products and consumer habits and needs.

The goal is for all EU member states to transpose the provisions of the amended EC Directive(s) and Regulation(s) into their national laws.

First EU trademark, now EU design reform

Following the implementation of the EU Trademark Reform Package, attention has now turned to the Community design and model system. At 20 years old, the existing system was implemented before digital channels became so prevalent, making it in need of modernisation. For a start, the digital tools and media we use daily render the current filing tools and objects available for protection partly obsolete.

The EU design reform project includes a revision of Council Regulation No 6/2002 on Community designs and Directive 98/71/EC on the legal protection of designs. 

As we previously covered, IP law professionals have been invited to send comments on the current proposal, including suggesting modifications or improvements informed by their daily practice.

While we eagerly await the final version, we can take a more detailed look at the modifications and technical developments, including the influence of sustainability considerations.

EU design reform: What are the main objectives?

The reform seeks to modernise the media used to register designs and models, as well as the nature of the designs that can be protected, by integrating them into digital form. It seeks to better manage and accommodate:

1. Designs that are not incorporated into physical products: The movement, transitions or animation of a product’s characteristics (article 2.3 of the Directive) and digital interfaces (article 2.4.b of the Directive) are explicitly targeted;
2. Technical advances in visualisation and creation of digital products: At the moment, the protection of video sequences or animations is only possible by cutting them into seven consecutive views and filing them in the same design to represent more or less the content of the animation. The new provisions will make it possible to file a video file and, a priori, CAD files and 3D images.
3. The growing use and development of 3D printing by ensuring design rights are better protected. The definition of illicit copying is expressly clarified in the Directive and includes: "the creation, downloading, copying and sharing or distribution to others of any medium or software recording the design and model to enable the production of a product [in which the design or model is incorporated or to which it is applied]” (article 16.2.b of the Directive).

As a result, the wider use of software and other mediums to register designs and models, as well as the ability to reproduce a product for commercial purposes via a 3D printer will be prohibited across EU member states, once the provisions of the EU design reform package have been incorporated into the national laws of those states.

EU design reform: The repair clause

The concept of sustainability and the green economy are integrated into this reform thanks to the repair clause.

Awareness of the need to reuse second-hand or less expensive parts in the circular economy has led to proposed modifications as to the scope of design and model rights, including overriding the holder’s monopoly and ability to prohibit third parties from reproducing the protected product.

The economic impact of this modification has been quantified to justify this provision. The spare parts market is very important and the European Commission envisages that including the repair clause could allow estimated savings between 340 and 544 million euros a year.

Thus, Article 18.1.h expressly provides that: “The rights conferred upon registration of a design or model do not apply to the carrying out of repairs on these vehicles”. Article 19 sets out an express repair clause which provides that protection will not be granted to parts of complex products the purpose of which is to enable the repair of this product to restore it to its original appearance. On the other hand, this clause can only be invoked by the manufacturer of this part if a clear and visible mention appears on the product and informs the consumer of the origin of the product.

This clause may be invoked, therefore, by the manufacturer of spare parts if three conditions are met: (1) that the part is part of a complex product; (2) that its shape is conditioned by the complex product for which it is intended; and, (3) the need to inform the consumer clearly and visibly that it is a spare part.

This provision is scheduled to have to be adopted by EU member states no later than 10 years after the entry into force of the Directive and will only be applied to future registrations.

EU design reform: A change of name

The planned facelift on designs and models in the EU will be accompanied by the scrapping of the term ‘Community’ since, to align with the Trademark Reform Package, designs and models will become “of the European Union”.

Note, however, that these provisions are not final. Amendments to the Directive and the Regulation are still in progress. Nonetheless, we expect the protection of digital products, the possibility to deposit 3D videos or images and the consideration of ecological and economic imperatives not to be called into question in the final version of the reform, given those provisions seem both logical and obvious.

For legal advice on protecting design rights in the EU, speak to your Novagraaf attorney or contact us below.

Anne-Catherine Schihin, Industrial Property Attorney – Trademarks, Designs and Models, Novagraaf, France.