Two legislative acts aimed at modernising the EU designs protection framework were formally adopted by the Council of the EU on 10th October 2024. This represents the final step in a decision-making process which formally began in November 2022 with the publication of the proposed revised Directive and Regulation.

The revised Directive (recast of directive 98/71/EC) and Regulation (amending Council regulation (EC) No 6/2002) will soon be published in the Official Journal of the European Union and enter into force 20 days subsequently.

The revised Directive and amended Regulation have three main aims:

1. To ensure that design protection is fit for purpose in the digital age, including protecting modern technologies such as 3D printing and virtual designs in the metaverse.
2. To support competition in the spare parts market, particularly in the automotive industry, through the introduction of a permanent EU-wide ‘repair clause’ for ‘must-match’ spare parts.
3. To simplify and streamline the process for registering designs in the EU, thereby encouraging more businesses to engage with the EU designs system.

A system fit for modern times

A lot has changed since the introduction of EU legislation on design protection over 20 years ago, not least the emergence of additive manufacturing and digital designs. The revised Directive and Regulation will introduce updated definitions and new infringement powers to reflect industry developments and modern technologies:

• Updated definition of design: The new definition of “design” will include movement, transition or any other sort of animation of features that can contribute to the appearance of designs, in particular those not embodied in a physical object.
• Updated definition of product: The new definition of “product” will encompass both physical objects and products in digital form.
• New infringement powers to combat illegitimate sharing of design files for 3D printing: Under the new Directive and Regulation “creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product (in which the design is incorporated or to which it is applied)” will be subject to the right holder’s authorisation.

Greater competition in the spare parts market

The revised Directive and Regulations make significant changes to the level of protection offered to so called “must-match” features.

The introduction of limitations on the level of protection offered to ‘must-match’ features aims to increase competition in the spare parts market, particularly in industries such as automotive. Currently, it is not possible to protect features of a design that must be designed in a certain way so that the product can functionally interact with another product (so called “must- fit” features). Examples of “must-fit” features include plugs and sockets, or the fittings on a car door that fix it to the body of a car.

While “must-fit” features are defined as those that are required for a functional fit with other products, “must-match” features are those that are required for an aesthetic fit. An example might be the overall shape of a car door: while the door could in theory take various forms and still function as a door, one would expect the doors on each side of a car to match with each other and the shape of the car as a whole.

Currently, while registration can be obtained for the design of “must-match” components, protection is somewhat limited by the Repair Clause. The Repair Clause allows for otherwise infringing goods to be sold for the purpose of repair if consumers are made aware of their origin, and if they will only be used for repair purposes. For instance, a car wing mirror having a specific shape that would otherwise infringe a registered design may be sold to allow car owners to repair their car, but could not be used on a new car sold as a complete item.

However, the Repair Clause is currently only a transitional measure. Under the revised Directive and Regulations, the Repair Clause will be converted into a permanent feature of the EU designs landscape, providing greater clarity for the automobile industry and ensuring effective competition in the spare parts market moving forward.

Potentially broader protection for features not visible during “normal use”

While making the Repair Clause permanent is likely to reduce the level of protection available to design holders, the clarification that a design feature does not need to be visible apart from in the design drawings may have the opposite effect. At present, EU design law does not permit protection for designs of component parts of a complex product that are not visible during “normal use” of the product. However, until now it has been less clear whether the requirement for visibility also applies to other products that are not component parts of a complex product. The definition of “normal use”, which explicitly excludes maintenance, servicing or repair work, has also been contested.

The amended legislation clarifies that features of products which are not component parts of complex products are protectable so long as they are visible in the design application. This runs contrary to a line of case law which required visibility of a feature in order for a design to be protectable. For example, in decision T‑494/12 the General Court of the EU refused protection for a chocolate-filled cookie on the grounds that chocolate filling was not visible, even though the cookie was not found to be a complex product. Under the new legislation, it seems possible that such a design might be allowable if the chocolate filling were to be visible in the figures of the design application, for example in a cross-section view. The new legislation may therefore afford design protection to a broader range of products.

However, it remains the case under the new legislation that component parts of a complex product must be visible during normal use in order to be afforded design protection. The question of what constitutes normal use has been subject to a number of referrals to the EU courts in recent years. However, in several decisions the courts have taken a broad interpretation of “normal use” and a narrow interpretation of component parts of complex products. For example, in decision C-472/21 the CJEU decided that normal use could include storage and transportation of a bike as well as simply riding the bike. This means that features of the bike, such as the underside of the saddle, which would not be visible when the bike is being ridden but may be visible when the bike is positioned on a bike rack on a car roof could be protectable. In decision T-617/21, a case which was successfully appealed by Carpmaels & Ransford to the EU General Court, it was found that an electrode used in a welding torch was not a component part of a complex product, but a separate product in its own right. The Court also found that “normal use” extended to replacing the electrode once it was burnt out, dismissing an argument that this amounted to maintenance of the torch. Overall, therefore, case law in this area has tended to allow protection for a broader range of products.

This change to legislation, in combination with the recent case law regarding component parts of complex products, means that a broader range of features of products may be eligible for protection even if they are configured to interact with other components, or are not always visible when the product is in use.

A simplified system

The new Directive and Regulation has been designed to streamline and simplify the EU designs system. This will be achieved by:

• Removing unity of class: Under the new Directive and Regulation the unity of class requirement will be removed making it possible to file multiple designs within the same application, thereby providing access to bulk discounts.
• Reduced fees: Application fees will be reduced, and the schedule of fees will be simplified to make design protection more affordable.
• Removing unregistered design rights: EU member states will no longer have the ability to provide unregistered design protection at a national level. This is more of a formality since no member states currently provide this protection at a national level, but it is a point of difference with the UK system where unregistered design rights with significant differences to the those provided by the EU Community Unregistered Design Right continue to exist.

Summary

While many of the changes in the new Regulation and Directive largely codify existing approaches to design law, there are some changes which are likely to be welcomed by applicants, in particular, the clarification to the visibility requirements for non-complex products and the reduction in fees with the removal of the unity of class and reduced application fees.

It is also interesting to note that the changes described above give rise to several points of divergence between the designs regime in the EU and UK, since the changes will not take effect in the UK. Given that EU and UK registered designs only ceased to be harmonised on 1st January 2021, it is noteworthy that there will soon be some significant differences in their respective rules for registration.

If you have any questions about the updated system, please contact the Carpmaels Design team who will advise you on the optimal approach for maximising the commercial potential of your design assets around the world.