The European Commission has published a report evaluating EU legislation on design protection, which assesses the overall functioning of the design protection system both at EU and national level, in what may be the first step towards a new Directive.
By way of a quick reminder, designs protect the appearance of the product itself and/or its ornamentation. Spanish, as opposed to other languages, distinguishes between dibujo (literally, ‘drawing’) and modelo (‘model’) depending on whether its nature is two-dimensional or three-dimensional, although the term “diseño” (design) is usually used to cover both. Provided that the novelty and individual character requirements are met, the pattern on a tie, a perfume bottle, the arrangement of a shop window or mobile phone icons for example, may be registered as designs. However, the protection conferred by a registered design is not indefinite, since exclusive rights in a design are granted for five years, extendible by further five-year periods, up to a maximum of twenty-five.
The report looks at the strengths and weaknesses of substantive and procedural law in the EU in connection with designs. The assessment is based on data and information compiled between 2014 and 2020, including, among other sources, the legal and economic reviews prepared by groups of experts and academics, the reports prepared by The European Union Intellectual Property Office (EUIPO) and the IP offices of the Member States, as well as contributions by stakeholders in the context of public consultation processes.
The evaluation aims to determine to what extent EU legislation on design protection (essentially, the Directive on the legal protection of designs of 1998 and the Regulation on Community designs of 2002) has achieved its objectives, esentially:
- To encourage innovation by providing effective protection of designs in an undistorted market;
- To encourage the EU’sdigital and green transformation;
- To create an accessible and efficient system for industries, SMEs and individual designers.
The report concludes that the current design legal framework works correctly and, in general, is fit for purpose. The most positively valued aspects are speed, reliability and the reduced cost of the system, as well as the considerable level of harmonization of design legislation among the Member States, which benefits industries as diverse as those engaged in the manufacture of clothing and footwear, clocks and watches, toys, furniture or sports articles.
However, the report also identifies several shortcomings and areas for improvement, which can be grouped into the following categories:
- Insufficient awareness: Despite the increase in the number of design applications, the system is underused. This is possibly because there is not enough awareness of the advantages of obtaining design protection, and the difference between designs and other IP property rights is not sufficiently clear.
- Registration aspects: The report calls for greater harmonization between the different national registration systems across the EU, which vary considerably from one Member State to the next.
For example, not all the competent offices carry out a substantive examination for novelty and individual character, nor do they allow the same maximum number of views that may be submitted with a design application The applicable fees also vary considerably, which puts SMEs and designs at a disadvantage.
The report also underscores the need to update the registration system in view of the considerable technological developments that have taken place in the last two decades, for example, by allowing dynamic views in video files and clarifying whether a graphical user interface (e.g. the appearance of a PC’s desktop) or animated or virtual designs fall within the definition of ‘product’ the appearance of which qualifies for design protection.
- 3D Printing: In view of the increasing importance of 3D printing, which has been covered by a specific study, two issues warrant attention particularly for reasons of legal uncertainty:
- To what extent creating, sharing and publishing CAD (computer-aided design) files that enable a design to be reproduced, constitutes infringement of that design;
- How the private use exception, for non-commercial purposes, is to be interpreted to ensure that said exception is not broader than the exceptions envisaged for other IP rights
- Relationship with other intellectual property rights: Recent case-law of the Court of Justice of the European Union (CJEU) underscores the need to review the Member States’ broad discretion to define the interaction and differences between shapes protected by designs and those protected by copyright, as well as the differences between designs and 3Dor movement marks, for example. The report also suggests that the discrepancies between the design system and the trademark system should also be corrected, providing more clarity regarding what may and may not qualify for protection and harmonizing the grounds for invalidity.
- Enforceability against third parties: The report highlights the inability of EU design law –as opposed to trademark law– to challenge counterfeit goods in transit. It also underscores the substantial differences between the EU Member States with respect to the duration and cost of design infringement proceedings and the actions that may be brought by the owner of a design. The report calls for the effective application of the Design Directive, to ensure that the procedural rules of the Member States do not vary substantially with respect to issues such as obtaining evidence or injunctions, nor as concerns the applicable sanctions for infringement.
- Spare parts: According to the report, legislation on spare parts is the major unresolved issue of the EU. The lack of clarity and harmonization on the subject distorts competition, fragments the market and results in a great deal of legal uncertainty. The huge importance of this sector, mainly for the automobile industry, has led to the implementation of provisional solutions. We refer for example, to the repair clause, which allows the use of component parts of a complex product (i.e. the rear-view mirror of a car) incorporating a design, provided its use is intended exclusively for the purpose of repairing a complex product (i.e. the car) to restore its original appearance. The report highlights the need for a common position that gives consumers access to spare parts at a reasonable price and supports, among other aspects, the green transition of the EU, without affecting the rights of manufacturers.
Following the publication of the report, the Commission has devised an initiative to update EU rules on design protection, creating a roadmap and inviting stakeholders to provide feedback.
According to the envisaged timeline, following a public consultation period we can expect an inception impact assessment, which in view of the conclusions drawn from the relevant input, may lead to a draft Directive proposal during the last quarter of 2021.
Garrigues Intellectual Property Department