EU Design reform: a reminder of the key issues

The proposed new EU Design Regulation and Directive are expected to be formally adopted by the EU Council and published shortly, but what changes are introduced and what do they mean for designers?

What has happened?

The European Parliament has formally adopted the final texts of the proposed new EU Design Regulation and Directive. These reflect the provisional agreement reached with the Council on 5 December 2023. The Council is now expected to formally adopt the same texts at first reading at an upcoming meeting. The Regulation will start to apply after four months, and Member States will have 36 months to transpose the Directive into their national systems.

Once the new laws come into force, UK and EU design law will be slightly different, meaning designers will have to deal with a two-tier – albeit overlapping – system. The UK has indicated that it also intends to conduct further consultations on the UK design regime this and next year. While similar changes may be made to the UK regime, it is unlikely to map directly onto the new EU regime. 

What changes will be introduced by the new Regulation?

The proposals for a new Regulation include the following provisions. They will apply to Registered EU Designs and/or Unregistered EU Designs (as appropriate). 

• Terminology. Registered Community Designs (RCDs) will now be known as Registered EU Designs (REUDs) and Unregistered Community Designs (UCDs) as Unregistered EU Designs (UEUDs). This follows a similar change many years ago to the name of Community trade marks (CTMs) – now EU trade marks (EUTMs).

• Definition of Design. The definition of a design is updated to future proof the legislation for technological advancements and provide more legal certainty in relation to eligible subject matter not embodied in physical products. The definition of a design will now include "the movement, transition or any other sort of animation of" the features of the appearance of the whole or part of a product. This change applies to REUDs and UEUDs. 

• Definition of product. The definition of product is also expanded to include any industrial or handicraft item other than a computer program "regardless of whether it is embodied in a physical object or materialises in a non physical form". In a previous draft, the words were "digital form", now they have been widened to cover "non-physical" form. Again, this is intended to make clear that the appearance of digital products is covered. The examples of what can constitute a product has also been expanded to include the spatial arrangement of items intended to form an interior or exterior environment (such as a shop layout). Graphic works, symbols, logos, surface patterns and graphical user interfaces are now added as other examples of products. These changes apply to REUDs and UEUDs.

• Visibility requirement. Given the expanded definitions of design and product, the proposal clarifies that design protection is conferred for REUDs only for those features of appearance that are shown visibly in the application for registration. 

• Unity of class abolished. It will be possible to file multiple designs in the same REUD application without being limited to products of the same Locarno Class (thus allowing a bulk discount).

• Scope of protection. The scope of protection for an REUD has been broadened by including 3D printing in the activities that can be prohibited. In addition, REUD holders will be able to prevent counterfeit products transiting through EU territory (mirroring existing provisions for trade marks). 

• Defences. Referential use, comment, critique and parody have been added as defences. This change applies to REUDs and UEUDs.

• Spare parts. The current Designs Regulation already contains a transitional repair clause in Article 110, but the current Designs Directive does not. The new Regulation will make the clause permanent (with some amendments to reflect the case law of the CJEU in Acacia v Audi and Porsche). The effect of the new repair clause is to make registered and unregistered design rights unenforceable where the design of the component part of a complex product is applied or incorporated into an item used for repairing a complex product to restore its original appearance. The development will be welcome news for those in the spare parts market but will limit the rights of design owners and original manufacturers. The manufacturer or seller of the component part (used for repair) has a duty to inform consumers about the commercial origin, and the identity of the manufacturer, of the product to be used for the purpose of repair. This is to allow consumers to make an informed decision between competing products that can be used for the repair. The manufacturer or seller must also ensure that the user of the component part does not use the item for purposes other than that of repair. However, this obligation does not require them to guarantee, objectively and in all circumstances, that the spare parts they make will be used for the sole purpose of repair by the end consumer. 

• Design notice. The proposal introduces a new design notice. Rights holders can inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter D enclosed within a circle.

• Fees. EU design fees have been set out directly in the proposed Regulation to ensure that the revenue they produce is sufficient, reflects the size of the market covered by the EU design and to ensure that the registration of national designs will be cheaper. 

What changes will be introduced by the new Directive?

The proposals for a new Directive include the above plus the following. They apply to member state national designs.

• Unregistered designs. The proposal will remove the discretion that permits Member States to provide unregistered design protection at national member state level. With the new Directive, design protection will only arise through registration at national member state level. Unregistered design protection will still be available on a pan-EU basis (in the form of the Unregistered EU Design). 

• Ownership presumption. New provisions are included on the rights conferred to the right holder, including a presumption of ownership.

• Prior use. A prior use defence is introduced in line with similar provisions contained in the current design Regulation.

• Cultural Heritage. The new Directive will also allow Member States to provide provisions (registrability and validity conditions) to prevent the improper registration and misappropriation of elements belonging to cultural heritage that are of national interest. The text uses the UNESCO definition of "cultural heritage". This includes, for example, monuments, buildings, artefacts, handicrafts, and costumes.

• Mandatory invalidity provisions. Optional grounds for non-registrability and invalidity of national registered designs have been converted into mandatory provisions to increase predictability and consistency with the EU design system. 

• Repair clause. The repair clause mirrors the proposal contained in the Regulation, but the new Directive includes a transitional period of 8 years (down from 10 years in a previous proposal) to safeguard the interests of existing design rights holders if the member state allows design protection for spare parts when the new Directive comes into force. 

• Deferment of publication. The proposal provides the option for applicants for national registered designs to request deferment of the publication of a design application for a period of 30 months from the date of filing the application. This can be a useful process for keeping new designs confidential.

What next?

If and when adopted by the EU Council, the new Regulation and Directive will be published and come into force 20 days thereafter. The Regulation will start to apply after four months, and Member States will have 36 months to transpose the Directive into their national systems.