On November 18, 2024, the"Design Reform Package" of the European Union (EU) was published. After a process lasting many years, an important first step has been taken towards modernizing EU design law. The changes affect various facets and are scattered throughout the law, which makes it difficult to find one's way around. This article highlights the most important practical innovations.
I. Background and motives
The previous EU design law provisions were adopted over 20 years ago and have been subject to a critical review by the EU Commission for some time. The legal framework was indeed a little outdated and needed some adjustments, particularly with regard to the needs of the digital age.
This is where the new European Union Design Regulation and the new Design Directive come in. In addition, the registration process is to be simplified and the administrative burden on the European Union Intellectual Property Office (EUIPO) and the national trademark offices is to be reduced. The aim is to make design protection more efficient and sustainable for the future.
II. European Union Design Regulation and Design Directive
The new registered Community design regulation (Regulation No. 2024/2822) governs the integrated European registered Community design, while the new registered Community design directive (Directive 2024/2823) provides for requirements for the respective national designs. While the regulation applies directly in all member states, the directive must first be implemented by national laws. Both measures are intended to contribute to the harmonization of the internal market and create the most uniform rules possible, which are crucial not least for trade between member states.
III. From registered design to design?
The Design Regulation (Regulation No. 2024/2822) no longer refers tothe "Community design" but tothe "unified design patent".
This is recognizably based on the terminology of the EU trade mark from trade mark law. Otherwise, however, the outdated term"design" remains, which dates back to the late 19th century. A previous German language version of the regulation was stillbased onthe "Unionsdesign", which was then, strangely enough, replaced by the "Unionsgeschmacksmuster" in the final version.
The Design Directive (RL 2024/2823) is more progressive at this point – it is based on the term"Unionsdesign", which has long been clearly established in today's linguistic practice.
The terminological discrepancies may not be particularly fortunate from a legal point of view. But what is more interesting, of course, is how the EU reform package presents itself in practice.
IV. Extension of protection
The fundamental changes here concern the subject matter of the design, for which the definitions of"design" and"product" have been expanded.
1. extensions and clarifications
The basic principle remains that a design represents the appearance of a product or a part thereof, which results from features such as lines, contours, colors, shape, surface structure or materials of the product or its ornamentation. However, elements of "movement, change of state and any other type of animation of these features" are now also included in this basic definition, which constitutes a significant broadening. This is because, for example, dynamic and fluid design facets are now explicitly included in design protection, which was not the case before.
It also clarifies that the term"product" is not limited to the physical realm, but also includes intangible objects, including graphical user interfaces. This means that, among other things, the forms of appearance and representations of digital spaces can be protected, which is likely to have an impact on computer games in particular. The scope and reception of the practical implementation is therefore eagerly awaited.
Not everything here is new and revolutionary, of course. The fact that screen displays, such as the design of a website, are in principle accessible to design protection was already established by the District Court of Düsseldorf in its judgment of June 26, 2013 – 12 O 381/10 U – more than 10 years ago on the basis of the conventional definition. Nevertheless, the legal clarification is also to be welcomed here, by its very nature.
However, computer programs remain excluded from design protection. These programs continue to be subject to copyright only and are therefore not subject to registration rights, a situation that has not changed as a result of the design reform.
2. Missed opportunities?
On the other hand, the European legislator has (unfortunately) not dared to address other potentially promising topics in the field of design protection.
a. Sound and tone designs
During the long-standing reform process, the question also arose as to whether non-visualized designs such as artificially created sounds (e.g. engine sounds, artificial voices) should also be eligible for design protection. This was not included in the law, which seems worthy of discussion in light of the growing importance of sound and tone designs and would have required more in-depth consideration.
b. AI-generated designs
And what about AI-generated designs? Should these also be protected? Experts disagree on whether designs without a human designer are eligible for protection. In this regard, European legislators have failed to provide clarification. In this respect, it would have been worth taking a look at the United Kingdom, for example, which already has a regulation on AI designs. The EU legislator could have used this as a guide and thus "taken the bull by the horns" in this area. However, the courage to do so was (probably) lacking.
V. Repair clause
The design reform also includes the repair clause.
Accordingly, individual parts or components of composite objects (so-called "complex products") may be excluded from design protection. This concerns form-related parts that are used to repair these objects (so-called "spare parts"). In the case of the individual components, this means that their design is dictated by the design of the rest of the product (so-called "must-match" parts) – for example, the fender of a car, which must fit into the edges and curves of the body as intended. The repair clause allows spare part producers to use protected designs when producing and marketing so-called"must-match" spare parts.
However, the obligation to clearly and unambiguously inform customers (e.g. by clearly visible information on the spare part) about the commercial origin and identity of the manufacturer of the spare part must not be forgotten in the case of such spare parts. Furthermore, the exception applies only to spare parts that are used for repair purposes. However, there is no obligation for dealers and manufacturers to carry out appropriate checks to ensure that the spare parts are actually used.
However, the exception does not apply to so-called non-form-fitting parts, the design of which does not depend on that of the rest of the product, although the ECJ had assumed this in its "Acasia ruling" a few years ago. This is surprising at first. However, the unequivocal legal clarification is to be welcomed (also in terms of the necessary strengthening of rights holders), not least because it puts an end to long-standing demarcation problems in this area.
For Germany, there are hardly likely to be any significant changes here, because Section 40a of the German Design Act already provides for a repair clause. Other member states that do not have such a rule have eight years to introduce one. For the European design, there was already a corresponding protection barrier in Art. 110 of the Community Design Regulation (CDR) before the reform.
VI. Scope of the Visibility Requirement
The representation of the design in the application determines the scope of protection, which extends only to the features of appearance that are visibly reproduced in the application.
Furthermore, before the EU reform, there was a dispute as to whether a more extensive visibility in common use had to be added. This was demanded in various ways, which would have the effect that so-called "hidden" products that are built in and therefore not externally perceptible to the public would be excluded from protection. This is now being legally rejected by referring the visibility requirement solely to the features in the application, but not to other facets such as use or other aspects.
It is hoped that this ambiguity will also be eliminated by the design reform, which would be conducive to legal certainty in this regard.
VII. Strengthening the rights holders
The organization of rights will also undergo some changes and adjustments:
1. acts of infringement in connection with 3D printing
A key problem of design protection to date was 3D printing. Protection reached its limits where, for example, a dealer sent a file to a consumer to enable the consumer to 3D print a product that infringed a design, which was not considered a use of the design.
To close this protection gap, such acts in connection with 3D printing are now rightly included: Accordingly, the owner of a design can now also prohibit "the making, downloading, copying, and sharing or distribution of media or software in which the design is recorded, for the purpose of enabling the manufacture of a product [...]".
The reform now allows the design owner to prevent 3D print files from being copied or distributed in order to prevent imitations. This provides long-overdue support for rights holders in this area.
2. Transit ban
The same applies to the transit regulation.
Accordingly, the introduction of a design into the territory of the EU and its member states is now prohibited even if it is (only) intended for transit (so-called transit prohibition). This is to ensure that designs that do not meet the protection requirements do not enter the European single market in the first place. On this basis, the import of infringing products can now be prohibited until the person carrying out the import has proven that the design owner in the country of destination has no injunctive relief.
This means that infringing designs can be intercepted as early as the import stage.
3. Registration symbol "D in circle"
As part of the reform, holders of registered EU designs or registered national designs can now use a"D in circle" as a registration symbol or mark their designs in this way. This is intended to make it easier and quicker for third parties to become aware of the intellectual property rights of others. Time will tell how this symbol is received in practice. It is recognizably modeled on the "R in a circle" symbol commonly used for registered trademarks.
VIII. Significant procedural changes
The new European Union Design Regulation and the new Community Design Directive also provide for a number of procedural changes. The application procedure shall be simplified and the workload of the offices shall be reduced. This also affects the fee structure.
1. No more "one class" requirement for multiple applications
Previously, all designs in a multiple application had to belong to the same Locarno class. This restriction no longer applies – now, designs can be registered together regardless of their classification. However, the number of designs that can be submitted in a multiple application is limited to a maximum of 50, which was not the case before. This will now have to be considered for very extensive applications.
2. fee changes
In order to reduce the administrative burden at the EUIPO, there will also be some changes to the fee structure (the following overview can only hint at these, but not deal with them exhaustively):
- The publication fee will be abolished in the course of the reform. The application for a registered Community design will in future only incur a registration fee of €350.
- For multiple applications, there is now only a single fee of €125 for all designs from the second design (previously only €50 from the 11th design).
- The renewal fees for registered Community designs will be increased.
These adjustments simplify the system, but (probably) do not result in the announced fee reductions overall.
IX. Conclusion
The EU design reform brings with it a number of changes that affected companies should bear in mind from now on. On the positive side, the rights of design owners are being adapted to technological developments (such as in the field of 3D printing). This explicitly also concerns the subject matter of the design, where the reform is finally paving the way into the digital age. The harmonization push resulting from the reform is also to be welcomed overall. For some facets (such as the registration symbol "D in a circle"), it remains to be seen how they will be handled in practice. It is a shame that the EU Commission ultimately lacked the courage to tackle other critical areas (such as "sound and tone designs " and "AI-generated designs"). This is where an opportunity has been missed.
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The statements represent initial information that was current for the law applicable in Germany at the time of initial publication. The legal situation may have changed since then. Furthermore, the information provided cannot replace individual advice on a specific matter. Please contact us for this purpose.