Background
In 2014 the European Commission conducted an evalution on the functioning of design protection in the EU. Whilst overall it found the legislation to be fit for purpose it did identify some short comings:
- the design protection framework was not adapted to the digital age and lacked clarity and robustness regarding eligible subject matter, scope of rights, and limitations;
- certain design procedures were outdated or involved unnecessary administrative burdens;
- the lack of harmonised procedural rules led to inconsistencies between the EU and national design laws, impairing the interoperability of the EU design protection system;
- the fragmentation in the single market for spare parts has been creating legal uncertainty, severely distorting competition and increasing costs for consumers
Based on these findings there was a need for legislative revisions.
Aims of the Reform
- The aim of the reforms are to modernise, clarify and strengthen design protection in the EU;
- Improve accessibility by simplifying procedures;
- Harmonising the requirements between national and EU design protection and enhancing their interoperability;
- Harmonise ‘spare parts’ protection across the EU and to introduce an EU wide ‘repair clause’.
Implementation
There will be a two phased approach with some amendments applying from 2 May 2025 and other amendments in Phase 2 from 1 July 2026.
Areas of Reform
Terminology changes
- Community design will become European Union design (EU design or EUD)
- Unregistered design rights are will become Unregistered EU Designs (UEUD)
- The Community design court will become the EU design Court
- The Community Design Regulation becomes the The European Union Design Regulation (EUDR)
Definitions
- The definition of a design has been expanded to encompass animation. The term includes both movement and transitiion. This will therefore cover all sorts of digital designs.
- The definition of a product has been revised to include non-physical items. A product can be any industrial or handicraft item othen than computer programs regardless of whether it is embodied in a physical object or materialises in a non-physical form.
- The list illustrating what constitutes a product is re-arranged and broadened. The statutory definition now expressly encompasses sets of articles, spatial arrangements of items intended to form an interior or exterior 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.
- The new law states that protection shall be conferred for those features of the appearance of a registered EU design that are shown visibly in the application for registration. However, design features of a given product do not necessarily have to remain visible at all times during the use of the product to qualify for design protection. The only exception to this rule applies to component parts of a complex product, which must remain visible during normal use of the product (e.g. the bumper of a car).
Summary of additional key changes
- Designers can now update their names in the Register when their name changes (e.g. marriage)
- Time limit for a previous holder or licensee who has been using the design in good faith to request a non-exclusive licence from the new holder is set at 3 months from the date the new holder is entered on the register.
- New infringing uses of a design consisting of: (i) creating, (ii) downloading, (iii) copying and (iv) sharing or distributing to others any medium or software that records the design, which are particularly relevant in the context of 3D printing.
- Design right holders are now allowed to prevent counterfeit products from transiting through EU territory or being placed in another customs situation without being released for free circulation in the internal market.
- The new provision extends the exhaustion of rights to the territory of the European Economic Area (EEA). It then clarifies that the design holder cannot object to the remarketing of a product incorporating an EU design within the EEA when the product has been placed on the market in this area by the holder of the EU design or with his consent.
- To raise awareness about the design registration regime and to facilitate the marketing of products protected by design registration, design holders (or third parties having their consent) will be able to display a design notice on their products, consisting of a letter ‘D’ enclosed within a circle (Ⓓ).
- The new provision specifies that component parts of complex products will not enjoy EU design protection if they are solely used for repairing purposes aimed at restoring the original appearance of the product. The scope of application is now clearer: it applies only where the appearance of the component part is dependent on that of the complex product. Additionally, it outlines the requirements for spare part manufacturers including the need for sufficient identification of the commercial origin of the product. However, it specifies that they are not obliged to ensure that the component parts they produce or sell are only used for repairing the original appearance of the complex product.
Key changes to filing and fees:
- All applications will now be filed directly at the EUIPO. It will no longer be possible to file through national offices.
- Unification of the registration and publication fees into one single application fee, given the short time from filing, to registration, to publication of an EU design.
- For multiple applications, a flat fee per additional design is introduced thus eliminating bulk discounts based on the number of designs in a multiple application.
- It will be possible to file applications in multiple Locarno classes at the same time. Multiple applications can contain designs in different classes with a single condition regarding the maximum number of designs allowed, which will now be limited to 50.
- Deferred publication is no longer subject to the payment of a publication fee. Accordingly, design holders can no longer prevent publication by non-payment but must explicitly surrender the designs that they do not want to be published. In the case of a registration on the basis of a multiple application, the holder must clearly indicate which designs are to be published earlier or surrendered and for which designs publication deferment should continue. The lack of payment of the deferment fee at the moment of filing or within the deadline to remedy that deficiency, leads to the rejection of the application.
Renewals
- The calculation of the basic period for renewal for EU designs is aligned with that of EU trade marks. The basic renewal period will now be the six-month period ending on the date of expiry of the registration (and not on the last day of the month on which protection ends), and the grace renewal period (where a surcharge is applicable) will start the day after the date of expiry and will end six months after said date
- Renewal fees will increase especially in relation to the third and fourth renewals where they will increase from EUR 150 and 180 per design to EUR 400 and 700 per design.
As indicated some of the changes will come into effect in Phase 2 as secondary legislation is required.
This summary is adapted from the information published by the EUIPO and full details can be found by accessing the EUIPO website at: https://www.euipo.europa.eu/en/designs/design-reform-hub
Next steps for businesses
- Increase in renewal fees from 1 May 2025. Check if you have any EU designs expiring before 31 October 2025 and submit renewal requests before 1 May 2025 to benefit from the existing renewal process and fee structure.
- Consider whether there are any designs which your company would like to see protection of and we can further advise.