EU Design Legislation reform comes into effect
Following on from our review in July last year of the European Design Regulation (EC) No. 6/2002 and Directive 98/71/EC this blog is a reminder of the changes coming into force on 1 May 2025 and comments on the further modifications expected to come into force in July 2027.
The objective of the reform is to modernize the Regulation to bring it more inline with current design practice. The new Regulation also aims to simplify the process of obtaining registration, improve legal certainty and make obtaining protection more affordable for applicants.
From 1 May 2025, the definition of a Design will change to include animation, transitional designs and movement. Furthermore, the definition of the product to which the design is applied will change, so that moving forward, as well as being a physical product, the product may also be a non-physical product, including spatial arrangement of items intended to form interior or exterior environments. Graphic user interfaces are now explicitly listed as a product too.
As a result, the design need not be visible in use all of the time, but may instead be transitory in nature, as may be expected from a movement design. However, the design will still need to be sufficiently clear in the representations. The definition of what constitutes “sufficiently clear” in respect of the representations, as well as the format of representations that will be considered acceptable and the number of representations allowed will be clarified in the second phase of the implementation, since secondary legislation is required to bring these changes into effect.
The current transitional repair clause contained in Regulation (EC) No. 6/2002 is to become a permanent provision. However, the repair clause has been amended to be explicitly limited to component parts of a complex product upon whose appearance the protected design is dependent. The part must be used for the sole purpose of the repair of that complex product so as to restore its original appearance. Manufacturers and sellers of such spare parts wishing to take advantage of this exception to the rights of the design holder, will be obliged to (i) inform consumers about the commercial origin of the spart pare and (ii) ensure the spare parts are used for repair (although they do not have to guarantee that the pasts are only used for repair).
To address increasing use of 3D printing technology to manufacture products, the rights conferred by an EU design have been also clarified to explicitly include the prohibition of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design” for the purpose of enabling a product to be made to the design.
In addition, a variety of amendments are made in relation to ownership and citation of the designer, as well as introducing a new design notification tool . It is hoped that, similar to the copyright symbol, this device can be used to put people on notice that a design is protected by registered rights with the aim of reducing infringement.
Multiple applications are currently available, and allow a single applicant to apply to protect up to 50 designs in one application. Previously, the designs in one application all had to be in the same Locarno classification, but this requirement will be removed from 1 May 2025.
In an effort to simplify the procedural aspects of obtaining, enforcing and maintaining design protection in the EUIPO, all communication with the Office should be by electronic means moving forward. Furthermore, applications may now only be filed directly with the EUIPO, with the facility to file via a national office being removed.
To make the application process more economical there have been a number of changes to the fees. Some fees have been abolished, including the publication fee, the transfer fee and the file inspection fee. Some fees have been reduced, including invalidation and appeal fees, and others have been realigned. For example, the fee for additional designs in the same application, is now the same for each subsequent design, representing a decrease for the 2nd-10th designs, but an increase for the 11th-50th designs. Furthermore, the fee for deferred publication is now due on filing, when the request for deferred publication is made, rather than at the end of the deferment period or when publication is required. Whilst this has the benefit of avoiding accidental abandonment as a result of failing to pay the deferred publication fee in due time, if the holder does wish to prevent publication of the deferred design they will now need to actively withdraw the application prior to publication.
Finally, from 1st May 2025, partial invalidation of a European design registration will be abolished, and Office decisions on validity will be citable moving forward, as well as Court decisions, as at present.
In the second phase we are expecting provision for introduction of fast-track invalidation proceedings to address the problem of abusive design applications. Looking further into the future, there is expected to be a need to harmonisation of these changes in the member states as well as alignment on invalidation.
The updated Regulation and Directive can be found here (https://www.europarl.europa.eu/doceo/document/TA-9-2024-0164_EN.html#title2) and here (https://www.europarl.europa.eu/doceo/document/TA-9-2024-0165_EN.html)
If you have any queries regarding the changes or need any assistance with filing an EU Design application, please contact us.