The EU Design Legislative Reform Package was published in the Official Journal of the European Union on 18 November 2024. The aim of this article is to describe the changes that this reform introduces to EU design law.
1. The new legal instruments
The Reform Package includes two main legal instruments:
a) the European Design Regulation (EUDR) (Regulation of the European Parliament and of the Council of 23 October 2024 amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 (‘the Amending Regulation’) Regulation - EU - 2024/2822 - EN - EUR-Lex , and
b) the European Design Directive (EUDD) (Directive of the European Parliament and of the Council on the legal protection of designs (recast) (‘the Recast Directive’) Directive - EU - 2024/2823 - EN - EUR-Lex.
The EUDR will be further developed by Implementing and Delegated Regulations.
2. Entry into force, applicability, and transposition
Article 3 of the new European Design Regulation (EUDR) provides a phased implementation process. While the EUDR entered into force on 8 December 2024 its amendments will not be applicable all at the same time, but in phases I and II.
Phase I comprises the amendments introduced by the EUDR that will apply from 1 May 2025 and phase II includes new norms also provided by the EUDR that need to be further developed by secondary legislation (Implementing and Delegated Regulations), which will be applicable from 1 July 2026.
The new European Design Directive (EUDD) will have to be transposed by the Member States into their national laws within 36 months of the date of its entry into force (i.e. until 9 December 2027).
3. General aims of the reform
The main objectives of this reform can be divided into four groups: a) modernize, clarify and strengthen design protection, b) improve accessibility to that protection, c) ensure enhanced interoperability of design protection systems in the EU, d) harmonize the diverging spare parts protection regime across the EU.
The modernization, clarification and strengthening of design protection is made through updating key definitions, broadening the scope of design rights, expanding the number of limitations, and by clarifying the relationship between design right and copyright.
Improving accessibility of design protection in the EU mainly means the simplification of procedures, including changing filing requirements for adequation with different design types and changing fees.
The interoperability of design protection systems in the EU is to be enhanced by harmonizing the design registration requirements and by simplifying the invalidation rules.
Finally, the introduction of an EU-wide ‘repair clause’ by the EUDD will harmonize the different treatment that has been given to the protection of spare parts.
4. Specific changes of phase I
The specific changes of phase I can be grouped into those that are terminological and structural and those that are substantive.
4.1. Terminology and structural changes
In accordance with the Lisbon Treaty, all mentions to “Community” are to be replaced by “European Union” or “Union”. Therefore, community designs will no longer be. Once the new European Union Design Regulation is applicable (instead of the Community Design Regulation), there will be European Union design applications and European Union designs.
4.2. Substantive changes
Substantive changes may be further subdivided into changes in relation to a) definitions, object of protection and entitlement, b) exclusive rights and limitations, c) filing and examination, d) invalidity, e) jurisdiction, f) register, database and inspection of files, and g) fees.
a) Definitions, object of protection and entitlement
The definitions of “design” and “product” have been modified to include a wide range of designs and to be adaptable to technological progress. For example, the definition of “design” now includes animation. The definition of “product” explicitly includes non-physical items. (Article 3 of the EUDR).
Article 18a now provides that “Protection shall be conferred for those features of the appearance of a registered EU design which are shown visibly in the application for registration.”
b) Exclusive rights and limitations
Changes to exclusive rights and limitations include those related to: the Rights Conferred (Article 19 EUDR as modified by the EUDR), Limitations (Article 20 EUDR), Exhaustion of rights (Article 21 EUDR), Design notice (Article 26a EUDR), and the Repair clause (Article 20a EUDR).
The provision of the repair clause, which is one of most relevant changes to substantive rules of the EU design law, turns the transitional repair clause, currently in Article 110 Community Designs Regulation into a permanent provision. The new norm specifies that component parts of complex products will not be protected if they are solely used for repairing purposes aimed at restoring the original appearance of the product. It is now clarified that it is applicable only where the appearance of the component part is dependent on that of the complex product.
c) Filing and examination
Modifications in relation to filing and examination pertain to: filing via the national offices, which is no longer possible (Article 35 EUDR), Filing date and formal requirements (Articles 36, 38 and 45 EUDR), Multiple applications (Article 37 EUDR), Deferment of publication (Article 50 EUDR), and Renewal (Article 50d EUDR).
d) Invalidity
With the new EUDR some norms regulating invalidity proceedings were also changed: Disclosure (Article 7(2) EUDR), Legitimate interest (Article 24 EUDR), Res judicata (Article 52(3) EUDR), and Effect of priority right (Article 43 EUDR).
e) Jurisdiction
Regarding the procedural aspects of infringement actions the main novelties concern: Oral proceedings (Article 64 EUDR), Enforcement of decisions on costs (Article 71 EUDR), Action or counterclaim (Article 84 EUDR), Judgments on invalidity (Article 86 EUDR) and Restitutio in integrum (Article 67 EUDR).
f) Register, database and inspection of files
This area has also seen modifications mostly to harmonize the EU design practices with those used in relation to EU trademarks.
g) Fees
Finally, fees were also changed both in structure and in relation to their levels. Regarding structure, this means that publication fees no longer exist but a single application, and that a flat fee per additional design is introduced for multiple applications.
Amongst other changes, the new fee for additional designs is reduced as are the fees for application for a declaration of invalidity and appeal.
This Reform is welcomed, as some of the changes introduced were long awaited. The practitioners and users of the system have now approximately 5 months, until May 1, 2025, to become familiar with the new, and now adequately called, EU design law.
João Pereira Cabral is a Legal Manager at Inventa. He can be contacted at jcabral@inventa.com
