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The EU Parliament has now approved reforms to EU design law, we set out below some of the key changes.
Proposals to amend the law were suggested in November 2022. In December 2023, the provisional law was published and it was adopted by the European Parliament in March 2024. The new Directive and Regulation will be published in the Official Journal shortly. The Regulation will come into effect 4 months after it is published and member states will then have 36 months to transpose the Directive into national law.
The reforms aim to make registered design protection faster, more affordable and predictable as well as trying to address the challenges of 3D printing, artificial intelligence and digital transformation.
Scope of protection
The definitions of “design” and “product” are being amended to cover digital and 3D printed designs. Under the new law, it is clear that design protection extends beyond physical objects and can also be used to protect digital designs such as animations, maps and fonts. Design law can also be used to protect dynamic elements, such as advertising billboards which use natural light to change the design of the billboard over the course of the day. To accommodate digital designs, the representation rules are also being amended. Going forwards the number of permitted views will be increased and video files will be allowed.
The new definitions give scope for some interesting new types of design, for example, it might be easier in the future to protect parts of video games. Imagine iconic scenes from video games and movies, such as the slow-motion bullet shots in The Matrix, or a character’s celebratory sequence in a video game such as those we see in games like Fortnite. Thinking more outside the box, it’s even possible that the new design law could be used to protect the visual effects of fireworks displays or light shows.
The new definitions probably don’t change the actual scope of protection granted by current EU design, law as it is likely the existing laws already protect digital products and moving products. However, the new law does provide useful clarification and they do mean that it will no longer be necessary to manipulate or stretch existing definitions in order to achieve the right result.
New acts of infringement
It is clarified that a design might be infringed by creating, downloading, copying, sharing or distributing to others any medium or software which records the design. The purpose of this clause is to capture infringing acts related to 3D printing of articles which are protected by design law. Rights holders are also granted new rights to prevent the movement of counterfeit products passing through the EU.
Repair Clauses
New repair clauses exclude replacement parts for a complex product from design protection where those parts are used to restore a product to its original appearance. The exception is limited, it only applies to cases where a product is being repaired and the replacement part must be identical to the original part. The purpose of these provisions is to give consumers free choice and increase competition in the spare parts market. These new provisions will require some EU countries which offer protection for spare parts to withdraw that protection and an 8 year transitional period has been allowed for implementation of this aspect of the new law.
Fees:
The new rules do not amend the term of protection for a registered design, which can still be protected for a maximum of 25 years, renewable in five-year intervals. However, the fee structure is changing. Fees to file a design are low in order to motivate individuals and SME’s to register their designs, but costs will increase at each renewal, from 150 Euros at the first renewal to 700 Euros at the fourth renewal, in order to prevent the register becoming congested with designs which are no longer of interest.
Cultural heritage
It will be prohibited to use registered designs to protect cultural heritage elements of national interest, such as traditional costumes or artefacts.
Other changes
Other changes are being made which bring EU design law into line with EU trade mark law. References to Registered Community Design and Unregistered Community Design will be replaced with Registered EU Design and Unregistered EU Design. This brings the terminology into line with the terminology adopted by the EU Trade Mark Regulation in 2016.
There are also plans for a new design symbol which will consist of a D in a circle analogous to the copyright © and Registered Trade Mark ® symbols.
If you have any queries regarding this topic, or would like assistance creating or implementing an IP strategy, please contact Sarah Neil of our team.
Category: News | Author: Sarah Neil | Published: | Read more
