Two recent pieces of legislation mark a real reform of designs in the European Union. They entered into force in December 2024, but the provisions will be applicable as of different moments in 2025, 2026 and 2027, as we shall further detail:
- Regulation (EU) 2024/2822 – dealing with European Union designs, amending old Council Regulation (EC) no. 6/2002 on Community designs. This new Regulation on EU Designs will be applicable as of 1 May 2025, except for some articles which need to be further detailed by an Implementing Regulation, and will be applicable as of 1 July 2026.
- Directive (EU) 2024/2823 – dealing with the legal protection of designs registered at national level in the EU Member States, the aim being, of course, to better harmonize the key provisions of design law of the EU countries, for a successful functioning of the Internal Market. The new Directive shall be implemented in the national legislations by 9 December 2027.
To better serve the interests of the readers, we shall split the presentation of the novelties which are introduced by these new legal texts into two parts, as the points of interest vary for designers and companies seeking design protection on one hand, and for IP professionals on the other hand.
For designers and companies, we can list the following interesting changes and modernizations, which will be applicable very soon, as of 1 May 2025, concerning EU designs:
- You can register designs displaying any movement, transition or any animation of its features. Be aware that protection shall be conferred for those features of the appearance of the design that are shown visibly in the application for registration.
- The design can belong to a physical or to a non-physical product or object.
- The legislation now offers a broader list of examples of products for which designs can be registered: packaging, sets of articles, spatial arrangements of items intended to form an interior or exterior environment, parts intended to be assembled into a complex product, graphic works or symbols, logos, surface patterns, graphical user interfaces.
- You can include a wide variety of designs in a single application, regardless of whether the products belong to different classes according to the applicable international classification, which was not possible before. However, there is a limit of 50 designs per application.
- You can use a design notice which consists of a letter ‘D’ enclosed within a circle, to indicate that the product is protected by design registration.
- The rights conferred by a registered design have been extended so as to cover also the power of the right holder to prohibit the creation, downloading, copying, sharing or distribution to others of any medium or software which records the design for the purpose of enabling an infringing product to be made. The 3D printing technologies and unfair practices are among the ones targeted by these new provisions.
- Two additional situations when a third party can use a registered design are introduced. Acts carried out for the purpose of identifying or referring to a product as that of the design right holder are permitted (the scope here is to enable product interoperability). A second express permission is for acts carried out for the purpose of comment, critique or parody.
- The much debated “repair clause”, long expected by the spare parts industry for the automotive sector, has become a permanent provision of EU law: protection shall not be conferred on an EU design which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used for the purpose of the repair of that complex product, so as to restore its original appearance. The repair of the complex product must be the sole purpose, therefore tuning the product is not in the scope of this exemption. There is also an important condition to be respected by the manufacturers and the sellers of spare parts: to duly inform consumers, through a clear and visible indication of the product or in another appropriate form, about the commercial origin of those components.
- The exhaustion of design rights was extended, as compared to the previous legislation, from the EU territory to EEA (the European Economic Area). This means that a design right holder cannot invoke his rights to stop the re-selling of products incorporating the design, if that product was originally placed on the market in this area by the holder of the EU design or with his consent.
Corresponding provisions with the ones enumerated above are included also in the Directive (EU) 2024/2823, which means that, after transposition in the national legislations of the Member States, they will be applicable also to national designs in all EU countries by the end of 2027. An exception concerns the sensitive “repair clause”, for which a transitional period of eight years is provided (until the end of 2032). Also, exhaustion of rights is different in the Directive, and refers only to products which were originally placed on the market on the territory of the Union.
For IP professionals, besides the novelties enumerated above, the following can also be of interest, as concerning EU designs:
- There are major changes in the EUIPO fee structure. To mention a few: the merger of the registration and publication fees into one single application fee (which must be paid in one month since the filing of the application instead of having to be paid together with the application); for multiple applications, a flat fee per additional design is introduced; there is a reduction in the fees for application for a declaration of invalidity and appeal; there is an increase in the fees for renewals, to discourage renewals for designs which are not really used on the market.
- There is a clarification concerning the scope of the 12-month “grace period”: it applies when the previously disclosed design is either identical to the contested EU design, or it does not produce a different overall impression.
- The cumulation of design right and copyright is expressly regulated, a solution derived from the current “advanced harmonization of copyright law in the Union”, as it is stated in the recitals of Regulation 2024/2822. Therefore, designs are to be protected also under copyright, from the moment of their creation, if the requirements of copyright law are met.
- The “res judicata” effect was extended as to cover the decisions of the EUIPO which are final. Therefore, an application for a declaration of invalidity shall not be admissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Office or by an EU design court, and that first decision has become final.
Also, we can mention the following interesting provisions from the Directive 2024/2823:
- The national designs shall not be examined anymore as concerns the novelty and the individual character conditions, which means a major simplification of examination in some countries which still do this ex officio work, like the Office in Romania.
- The member states are recommended to introduce administrative invalidity proceedings for national designs (like in the trademarks field).
According to the latest statistics presented by the EU institutions before the entering into force of the Reform Package (Regulation 2024/2822 and Directive 2024/2823), design-intensive industries represent almost 16% of GDP and 14% of all jobs in the European Union, thus the importance of the modernization of this object of intellectual property.
Article by Veronica Floroiu. Get in touch with our team for more information on this topic.