09/12/2024
The Council of the EU has adopted a revised directive and amended regulation on registered and unregistered design protection. These reforms entered into force on 8 December 2024. The amended regulation will begin to apply on 01 May 2025 and the Member States will have until 07 December 2027 to implement the revised directive.
Terminology
• The Community Registered Design (CRD) is now called the European Union Design (EUD).
• Unregistered rights are now called Unregistered EU Designs (UEUD).
Changes to the application process
• A single application can now cover multiple Locarno Classes.
• The EUIPO set a limit of 50 designs per application.
• The fee structure has been simplified. No changes for one design application, but fee for additional designs has been reduced.
• Animation has been added as an example of acceptable designs, clarifying that sequences from media including video games and films may be protected.
• The definition of product required on filing has also been revised. Products in non-physical forms may be included, example listed as digital goods sold via the Metaverse, as may graphical user interfaces, and spatial arrangement of items intended to form an environment (a shop layout is given as an example). Sets of articles may be specified.
• Deferred publication used to require a final fee at the end of the deferment period to avoid abandonment. That has been removed. Designs will automatically be published at the end of the deferment period unless they are explicitly surrendered.
Changes to design rights – Renewals
The calculation of renewal fees has changed. Renewal is now due on the anniversary of the filing date, not the end of the month in which the anniversary falls (as present). The renewal fees, particularly for the third and fourth renewal, will increase significantly. The fourth fee jumps from €180 to €700.
Changes to design rights – Infringement
New infringement scope: design owners have been granted the right to prohibit acts which enable copies to be made using 3D printing, including the creating, downloading, copying and sharing or distributing of any medium or software which records the design. EUD owners have the right to stop counterfeit goods from transiting into the EU unless they are released for free circulation on the market. There are two new exceptions to infringement actions. The first is identification and referential use, allowing statements about product interoperability. The second is comment, critique or parody.
Marking
Owners of registered EU designs have also been granted the right to affix a design notice, namely a D enclosed in a circle ( ), to their product.
Harmonization of repair rights
The law on right to repair has been clarified with the aim of harmonization of national laws. There is no protection for a design which constitutes a component part of a complex product for the purpose of the repair of that complex product so as to restore its original appearance. This exception applies exclusively to repair purposes and the replacement part must match the appearance of the original piece.
In order for manufacturers or sellers of spare parts to be defended from infringement claims, they must inform consumers through a clear and visible indication, for example on the product, about the commercial origin of the product and the identity of the manufacturer. There is an 8-year transitional period for implementation of this provision by Member States.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
