What is a design? Many consumers will first think of an original object created by a designer, and then of the fact that it can be protected and registered as an exclusive right. But what does this protection involve? Is it possible to protect a spatial arrangement? An animated design? Among other things, the new regulations bring new definitions and greater visibility to Registered Designs

What is a design? Many consumers will first think of an original object created by a designer, and then of the fact that it can be protected and registered as an exclusive right. But what does this protection involve? Is it possible to protect a spatial arrangement? An animated design? Among other things, the new regulations bring new definitions and greater visibility to Registered Designs

Design legislation had not been reviewed for over 20 years. It was time to meet the new challenges. The new legislative package comprising a new design Directive and a new Regulation was approved by the council on 5 December 2023. The European parliament approved the reform on 1st March 2024 to modernize, simplify and harmonize the law. The European Council will soon formally adopt this new legislative package.

 

WHAT CHANGES WILL THERE BE?

 

It’s not a revolution, that’s for sure. However, design and their protection have been adapted to the new technological and environmental challenges. As a result, a wider range of designs will be eligible for protection, which has been framed by new definitions.

 

The definitions have been adapted : a design means “the appearance of the whole or a part of a product resulting from the features, in particular,... including the movement, transition or any sort of animation of those features” and a product refers to “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including: …spatial arrangement of items intended to form an interior or exterior environnement…; graphic works,… surface patterns,… and graphical user interfaces”.

 

Designs – and this is a novelty - can also be virtual designs, virtual spaces or spatial arrangements such as the layout of a shop, or even animation. It is conceivable that design protection will apply to the spatial layout of a drone show or fireworks display for example.

 

Moreover, the scope of protection of a design registration has also been extended. Indeed, a protected design makes it possible to prohibit creating, downloading, copying or sharing media or software recording a protected design for the purpose of enabling a product to be made incorporating the design. This includes 3D printer articles which may be prohibited if they reproduce objects protected by a design or objects incorporating the protected design.

 

By contrast, in order to respond to environmental challenges and to promote repair, a new repair clause has been introduced which excludes design protection for spare parts under certain conditions. Notably, if we replace part of a complex product when they are used to restore a product to its original appearance, there will be no infringement.  These damaged spare parts will be replaced by an identical product. Consumers can look forward to obtaining more sustainable products on the market.

Other changes will be made, many of them more technical. Terminology, proceedings and fees will be adapted and simplified. For example, applicants for multiple designs will benefit from reduced fees. The aim is to encourage SMEs and individuals to register designs.

 

WARNING : THIS DESIGN IS REGISTERED

 

As with trademarks, design owners may use a registration symbol, i.e. the letter D enclosed within a circle   on the product in which the design is incorporated or to which it is applied. This symbol must be accompanied by the registration number or the hyperlink to the register. It will make it possible to identify the protection of a design for the consumers, to publicize and promote the protection of the product and the investment made in it, and to enable better verification of the legal compliance for companies.

 

WHAT’S NEXT?

 

After formal adoption by the Council, the new Regulation and Directive will be published and will enter into force 20 days later. The new regulation will apply in part 4 or 18 months later. The Member States must then transpose the directive within 36 months. This new legislative package will apply in 2026-2027 at the earliest.

 

AUTHOR’S OPINION

 

In the light of new technologies and the need for sustainable development, these changes are timely and consider the diversity of design innovations, the metaverse, augmented reality, 3D printers and technological developments. This more flexible system should make it possible to develop design protection and raise awareness of this IP right, which is often less exploited.

By Mélanie Pellissard  Trademarks | Designs Attorney Lecomte | Ipsilon Group

Sources:

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs

Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

The proposed reforms, set out in EU Regulation 2022/0391 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 and EU Directive 2022/0392 Proposal for a Directive of the European Parliament and of the Council on the legal protection of designs (recast)