Journal

A revamp for EU design law

Arjun Grewal (Student) and Hugh Dunlop (Fellow) summarise significant changes to the EU design framework. In this Journal in early 2025, the CIPA Designs & Copyright Committee will focus in more detail on some of the major changes that have been introduced.

On 18 November 2024, the EU design reform was published in the Official Journal of the European Union as a revised Regulation (Regulation (EU) 2024/2822)[1] and a revised Directive (Directive (EU) 2024/2823).[2] The Regulation and Directive enter into force on 8 December 2024 (20 days after publication) and most of the provisions of the Regulation (Phase I) will come into effect on 1 May 2025. A second phase of more minor aspects (see below) will take into effect after 18 months. In the meantime, the Directive gives EU Member States 36 months (until 9 December 2027) to implement the changes of law in their national legislation.

The updated versions look to revamp the legislative acts so that they are brought up to date for modern day technologies, such as 3D printing and virtual reality. The term ‘Community Design’ is brought up-to-date and is now ‘European Union Design’. Some of the key elements of the new acts will be highlighted in this article.

Movement and animation

The new Directive includes updates to some of the definitions. Article 2(3) of the Directive provides an updated definition to ‘design’, as it now reads:

‘… “design” means the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features…’

The emphasised part of the new definition reflects practice already adopted, which is that the appearance of a design can include movement, transitions, or animation of features, so long as they add to the appearance of the design.

Here is an example from the Guidelines of an animated screen display registered in 2012:

Digital objects and the metaverse

Article 2(4) of the directive provides an updated definition for ‘product’. It now reads:

‘… “product” means 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…’

The updated definition states that a product includes both physical objects and non-physical objects (i.e. objects in the digital form).

3D printing

Article 16(2) of the directive provides the ability to tackle illegitimate 3D printing and the sharing of such design files. Specifically, article 16(2)d sets this out as it states:

‘creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product referred to in point (a) to be made.’

This gives more power to the holder of the design rights, as these actions will be subject to their approval.

Hidden designs

Recital 13 of the Regulation and Recital 16 of the Directive no longer have any general requirement of visibility of a design. They now say ‘design features of a product do not need to be visible at any particular time or in any particular situation of use in order to benefit from design protection’. Thus, for example, the chocolate filling of a cookie, previously unregistrable (decision T-494/12) would now be registrable. It remains the case that component parts of complex products must be visible in normal use if they are to be registrable. E.g. the debate over whether the underside of a bicycle saddle is ‘visible in normal use’ remains relevant.[3] This change does not open the doors to registration of spare or replacement parts or consumable parts (e.g. cartridges) of complex products.

Introduction of the repair clause

Article 19 of the Directive introduces a limitation to design protection for spare parts. It allows third-party manufacturers to produce ‘must-match’ spare parts for complex products (such as vehicles), provided that these parts are used solely to restore the original appearance of the product.

The clause has a transitional period that lasts until 9 December 2032, as set out in article 19(4). This provides protection for designs that have been registered before 8 December 2024.

This is deemed to be at the core of a sustainable economy, as it was highlighted in the Commission communication of 11 December 2019 on ‘The European Green Deal’. This new clause looks to encourage repairability and reduce waste.

Unity of class requirement removed

Article 27 of the amended Directive now allows for multiple designs to be included in one application. This change is perhaps the most impactful. It allows for bulk discounts that were previously available only where all the designs in an application belonged to the same class of the Locarno Classification and it eliminates the need to deal with examiner requests to divide applications.

The present ‘same-class’ restriction is lifted upon the Directive coming into force on 8 December 2024, but there are changes in the fees coming up on 1 May 2025. The application fee for the first design will increase from €230 to €350 and for each further design the fee will increase from €115 to €125. There will be no further bulk discount. The present reduced fee of €50 for the 11^th and further designs in a single application (to a maximum of 50) is to be eliminated.

Thus, it is possible to bundle up many and varied designs in a single application and benefit from lower registration fees, but the discount for more than ten designs in a single application will soon disappear.

Phased implementation

The above changes to the Regulation take effect from 1 May 2025, but provisions that require further development through secondary legislation (Phase II) will take effect after 18 months. These include matters such as assignments of registered EU designs being in writing and signed by both parties (article 28), provisions for entering licences and other rights in the Register (article 32a), for cancelling or modifying such rights (article 33a) and for other office and inter-partes procedures.

The Directive requires EU states to implement in their national laws certain aspects such as the definitions of ‘novelty’ and ‘individual character’ set out in the original Design Regulation of 2001.

Arjun Grewal is a trainee patent attorney and Hugh Dunlop a consultant at Maucher Jenkins.

[1] eur-lex.europa.eu/eli/reg/2024/2822/oj

[2] eur-lex.europa.eu/eli/dir/2024/2823/oj

[3] See Monz Handelsgesellschaft International v Büchel GmbH & Co. Fahrzeugtechnik, Case C 472/21, 16 February 2023.