Industrial property, EU designs reform
The EU design legislative reform represents a significant modernization of the design protection regime, in line with current technologies and economic realities. It increases legal certainty, reduces complexity and widens the accessibility of design rights, greatly benefiting creators and businesses across Europe.
Purpose of the reform
The reform aims to:
modernize, clarify and strengthen design protection;
improve the accessibility of design protection in the EU;
ensure greater interoperability of design protection systems in the EU;
harmonize the divergent spare parts protection regime across the EU.
The phases of the reform define the date of application of the new legislation:
The amending regulation enters into force on the twentieth day following its publication in the Official Journal of the European Union, but the changes it contains will begin to apply in two phases.
1
Phase 1:
Some changes will apply from the first day of the month following four months from the date of entry into force of the amending regulation.
2
Phase 2:
Other amendments, including those introduced by secondary legislation (Implementing Regulation and Delegated Regulation) will apply from the first day of the month following the period of 18 months from the date of entry into force of the amending Regulation.
The Designs Directive will enter into force at the same time as the amending Regulation. Member States will have 36 months to transpose it into their national legislation.
The new EU design legislative package has been published and contains:
regulation of the European Parliament and of the Council amending Regulation (EC) No. 6/2002 of the Council on Community designs and models and repeals Regulation (EC) no. 2246/2002 of the Commission (‘amending regulation’)
Regulation – EU – 2024/2822 – IT – EUR-Lex
Directive of the European Parliament and of the Council on the legal protection of designs (recast) (‘Recast Directive’).
Directive – EU – 2024/2823 – IT – EUR-Lex
Main areas of change,
phase I
Terminology and structural changes
– ‘Community design’ becomes ‘European Union design’ (EU or EU design) – ‘Community Design Court’ becomes ‘EU Design Court’ – ‘Community Designs Regulation’ becomes ‘European Union Designs Regulation’ – the Fees Regulation is integrated as Annex 1 to the European Union Designs Regulation
elimination or redistribution of articles within the regulation, in line with the structure of the EU Trademark Regulation
Substantial changes
Definitions
Exclusive Rights and Restrictions
Filing and examination
Ownership
Taxes
Terminology and structural changes, phase I
Terminology
The terminology of the amending regulation is adapted to the wording of the Treaty of Lisbon and all references to the ‘Community’ are replaced with references to the ‘European Union’ or, in some cases, to the ‘Union’.
The ‘Community Designs Regulation’ will become the ‘European Union Designs Regulation’ (‘EUDR’).
The ‘registered Community design’ and the ‘unregistered Community design’ will become ‘registered EU design (registered DUE)’ and ‘unregistered EU design (unregistered DUE)’.
Existing ‘Community design applications’ and ‘Community designs’ will automatically become ‘European Union design applications’ and ‘European Union designs’ (‘EU designs’).
The ‘Community Designs Court’ will become the ‘EU Designs Court’.
The change in the name of the Office (to European Union Intellectual Property Office) has already been implemented following the legislative reform on trademarks. It is now also transposed into the amending regulation.
Structural changes
(Article 2 of the amending Regulation and other structural changes)
The Fees Regulation is repealed and the rules applicable to the level, structure and payment of fees are now incorporated into the amending Regulation as Annex I. This implies that any future changes to the amounts will have to follow the ordinary legislative procedure.
Other structural changes, involving the deletion or redistribution of articles within the Regulation and future secondary legislation, have been implemented mainly to align with the structure of the EU trade mark regulations.
Substantial changes
Definitions
Definition of design or model
(Article 3(1) EUDR, as amended by the amending Regulation)
The definition of ‘design or model’ has been broadened to include animation. Animation must be understood as a progressive modification of the characteristic or characteristics of the design or model, with or without maintaining their identity. Animation is a broad term, encompassing both movement and transition.
Product definition
(Article 3(2) EUDR, as amended by the amending Regulation)
The definition of ‘product’ has been revised to explicitly include non-physical elements. “Product” means any industrial or artisanal object, other than computer programs, whether incorporated into a physical object or rendered in non-physical form, including:
Additionally, the list illustrating what constitutes a product is reorganized and expanded. The legal definition now expressly includes assortments of articles, spatial arrangement of objects intended to create an internal or external environment and parts intended to be assembled into a complex product, as well as graphic works or symbols, logos, surface patterns and graphical user interfaces.
Exclusive Rights and Restrictions
3D PRINTING
(Article 19(2)(d) EUDR, as amended by the amending Regulation)
The scope of exclusive rights conferred by a design has been adjusted to include 3D printing. Now the creation, downloading, copying and sharing or distribution to others of any media or software in which the design is recorded also constitutes an unlawful use of a design. – New limitations
(Article 20 EUDR, as amended by the amending Regulation)
Two new limitations on exclusive rights are introduced.
1. Identification and reference: Acts taken to identify or refer to a product as the product of the holder of the design right. The objective is to enable the interoperability of products.
2. Comment, criticism or parody: Acts committed for the purpose of comment, criticism or parody are permitted to safeguard the right to free speech.
Repair clause
**(Article 20 a, EUDR, **introduced by the amending Regulation)
The transitional ‘repair clause’ becomes a permanent provision and clarifies the exception to design protection for spare parts used for the repair of complex products (e.g. cars). The clause clarifies that there is no protection for a design that constitutes a component of a complex product for the purpose of allowing the repair of that complex product to restore its original appearance. This exception applies for repair purposes only and the replacement part must match the appearance of the original part.
The clause addresses disruptions to the internal market for spare parts intended for repair, such as bumpers. It counteracts previous legal fragmentation in the protection of designs for spare parts, creating a more harmonized approach.
The new clause was inserted in Article 19 of the Recast Directive, with a transitional period of eight years. – Introduction of the design notice
(Article 26 a, EUDR, introduced by the amending Regulation)
As part of the recent changes introduced by the amending regulation, a system of notices relating to designs and models has been implemented. This system allows owners of designs or models, or third parties who have obtained their consent, to display a notice on their products to raise awareness of the design registration regime. The design notice will consist of a letter ‘D’ placed inside a circle (D), which can be used to indicate that the product is protected by design registration. This measure is intended to facilitate the marketing of registered designs and to improve the visibility of design protection.
Filing and examination
The recent reform introduces several significant changes to the filing and examination procedure in order to improve efficiency and accessibility for users. Below is a summary of the main changes.
1
Centralized storage
(Article 35(1) EUDR, as amended by the amending Regulation)
EU design applications can no longer be filed via national offices. All applications must now be submitted directly to the EUIPO, thus streamlining the procedure and reducing complexity.
2
Filing date requirements
(Article 35(4) and Article 38 DREU, as amended by the amending Regulation)
Payment of the filing fee became a requirement for setting a filing date. Applicants must ensure that fees are paid within one month of filing, thereby aligning the procedure with that of EU trademarks.
3
Champions
The submission of physical samples has been abolished.
4
Multiple questions of designs and models
(Article 37 DREU, as amended by the amending Regulation)
The ‘class unity’ requirement has been removed, allowing for a wider variety of designs in a single application. At the same time, a limit of 50 designs is introduced for each application to ensure manageability. The fee structure is also simplified.
5
Deferred publication
(Article 50(5) EUDR, as amended by the amending Regulation)
Deferred publication is no longer subject to the payment of a publication fee. As a result, design owners can no longer prevent publication for non-payment, but must explicitly renounce designs they do not wish to publish. Failure to pay the deferral fee at the time of filing will result in the rejection of the application.
6
Renewal
(Article 50 dEUDR, introduced by the amending Regulation)
The calculation of the basic period for the renewal of EU designs is in line with that of EU trade marks. The base renewal period will now be the six-month period ending on the registration expiration date (rather than the last day of the month in which protection ends).
The updated renewal fee structure encourages the retention of only active and market-relevant designs, ensuring the register remains up to date. This approach promotes a healthier design ecosystem and simplifies IP management. Furthermore, aligning the renewal process with EU trademark regulations offers businesses potential cost savings and convenience. It is important to underline that the EUIPO will use the date of receipt of your renewal application as the reference date for calculating the renewal fees. The old fees apply to requests received before the applicability date. For requests received after the applicability date, the new fees apply.
Right
(Articles 15 and 16 EUDR, as amended by the amending Regulation)
The changes regarding ownership provide clarification on the authority competent to deal with such matters and clarify that the entitled person can submit a request for change of ownership through a court application.
These changes ensure that legitimate owners can directly request a change of ownership rather than having to first request the nullity of the design or model.
Taxes
(Annex I to the amending Regulation)
The new regulatory regime provides for the unification of registration and publication fees into a single filing fee and, in the case of multiple applications, the introduction of a flat rate fee per additional design or model.
The changes will involve new renewal fees, the introduction of a new fee for continuation of proceedings and the amendment of a registered EU design.
On the other hand, the new fee structure includes a reduced single fee for each additional design in a multiple application (to a certain extent) and a reduced fee for the application for declaration of invalidity and appeal.
In addition, the following fees are eliminated: late payment of registration or publication deferral fees; fees for registration and registration of a transfer; cancellation of registration of a license or other rights; consultation of files; communication of information contained in a file; fees for issuing certified and uncertified copies.
Source
EUIPO
