On November 7, 2023, the European Parliament published the final form of the updated EU design legislation. This new legislation was shaped by new regulations and directives, and is also the European Parliament's response to the European Commission's proposal of 29 November 2022.
This new legislation is the largest reform of design rights in the EU in more than 20 years, affecting both Community designs (now known as EU registered designs under the legislation) and national registered designs in Member States. The European Commission's several objectives for this reform include strengthening design protection in the digital and globalized era, improving the acceptability and attractiveness of designs to SMEs, and eliminating inconsistencies between design and trademark laws.
Today, Xiaowei would like to introduce to you the major changes that have taken place since the initial proposal was proposed, as well as other important provisions that were not covered in the previous introduction.
1. Modification of the exception to "must match parts".
The initial proposal included a provision that would remove design protection for parts that "must match" in complex products. While the provision remains in the final legislation, there have been some changes in how and when it will come into force.
First, certain components – i.e. "rims, covers and similar parts", whose appearance is not determined by the appearance of a complex product – are now excluded from the scope of the new legislation.
Second, when producing a complex product that complies with the design right "must match the part", the new producer will be required to identify the original manufacturer in order to qualify for an exception. This information will include the name, address, **number, and/or email address of the original manufacturer.
Finally, there has also been a significant change in the timeline for the implementation of the legislation. The European Commission initially proposed a mandatory 10-year transition period before the law could enter into force. In contrast, the European Parliament has now changed the deadline so that Member States can choose a shorter transition period of no less than 3 years (the default transition period is 10 years). It remains to be seen whether any Member States will opt for a shorter transition period.
2. Abolish the requirement for Member States to initiate administrative nullity proceedings
The introductory text of the new legislation reiterates that administrative nullity procedures are desirable, but that they are no longer mandatory under the new directive.
This change will affect the exercise of rights by many rights holders, especially small businesses. At present, IP offices in some jurisdictions are already qualified to deal with invalidation proceedings in the first instance. In other jurisdictions, rights holders must apply to the courts to protect their rights, which inevitably increases the time and cost of protecting their designs. Administrative invalidation procedures can also improve the quality and feasibility of first-instance adjudication.
The increase in court litigation costs may discourage some right holders, especially SMEs, from protecting their designs from infringement and may undermine confidence in design protection in some jurisdictions.
3. The EU design fee will be determined in the regulation
According to the new wording, the registration and renewal fees for registered designs in the EU will be determined in the Regulation. This is a major change, which aims to keep the cost low and affordable. The final costs are as follows:
The European Parliament has set the fee scale in the Regulation, which makes it much more difficult to change the fee standard. Changes to fees would need to be agreed by the European Parliament through amendments to the Regulation, rather than being regularly updated by the European Union Intellectual Property Office (EUIPO). In practice, this means that fee updates are reduced.
There has been no change in the registration fee for design rights in Member States, which will continue to be determined by the IP Office of each Member State.
4. Removal of the requirement that multiple applications must belong to the same Locarno Classification
The European Parliament has simplified the procedure for filing multiple designs under the same application. The requirement that all designs in a single application must belong to the same Locarno Classification was removed, which would reduce the administrative burden of registration.
For newly released products, which previously required multiple applications to be submitted, thus requiring additional time and money for manufacturers, manufacturers can now register all aspects of their product – the product itself, the product's user interface, and its packaging – in a single application.
5. Harmonization of the deadline for extension of publication of design applications in Member States
Under the time limit set out in the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement), the publication of design applications in all Member States will be extended to 30 months. This provision has already been implemented in Community registered design applications and will now be extended to registered designs in all Member States.
Deferred publication allows applicants to postpone the publication date of their application, which helps to prevent registrations from being rejected in other jurisdictions due to lack of novelty. Currently, extension periods vary from Member State to Member State, which may unnecessarily complicate design registration strategies. In addition, there is a new provision that no publication may be made unless the consent of the applicant is obtained.
6. Harmonization of design expression and examination rules between the EU and Member States
The new Directive will require all Member States to update their design representation rules to bring them into line with the current rules for registered designs in the European Union. In addition, the new Directive requires the IP offices of Member States to cooperate on common standards for representation requirements so that these standards should now be consistent across the EU region.
The examination of designs in Member States is also limited to the substantive grounds of non-registrability set out in the new Directive.
In addition to the above, some minor changes are also worth noting:
Number of views – The number of views that can be submitted to the EUIPO and the IP Offices of Member States will change, either unlimited, or increase on the basis of existing provisions.
Parody and Commentary Exemption – The final legislation retains new exceptions for reference use, commentary, and parody. There are several questions surrounding the scope of these exceptions, which could be the subject of significant litigation.
Designs containing a national emblem are not registrable – there is a new provision in the legislation prohibiting the registration of any Paris Convention Article 6ter and other emblems or signs of national interest. Article 6ter covers the State emblem, official emblems and flags.
Three-dimensional (3D) printing** and software and 3D animation design protection – The initial proposal included new protection measures against illegal 3D printing, as well as several proposals aimed at improving the protection of 3D animation and digital designs, which have historically been difficult to register.
Protection of goods in transit – There are also proposals to extend design protection to goods in transit from one third country to another through the EU. The final wording retained its entirety and did not make substantial changes.