European Union designs (codification)

PURPOSE: codification of Council Regulation (EC) No 6/2002 on European Union designs.

PROPOSED ACT: Regulation of the European Parliament and of the Council.

ROLE OF THE EUROPEAN PARLIAMENT: the European Parliament acts in accordance with the ordinary legislative procedure and on an equal footing with the Council.

CONTEXT: Council Regulation (EC) No 6/2002 on European Union designs has been substantially amended several times and it is proposed that it be consolidated for the sake of clarity and rationality. The new regulation will replace the various acts incorporated therein; it fully preserves their substance and therefore merely groups them together, making only the formal amendments required by the consolidation process itself.

CONTENT: the Regulation provides the European Union with its own system of design protection, which provides for protection of designs at Union level, alongside the protection they may enjoy at national level in the Member States. The design protection system as a whole will be adapted to the digital age and will become more accessible and efficient for independent designers, SMEs and industries where designs play a major role, by simplifying and streamlining procedures, as well as adapting and optimising the level and structure of fees payable.

Protection of designs and models

Under the Regulation, an EU design is protected:

(a) as an 'unregistered' EU design, if it is made available to the public in accordance with the procedures laid down in this Regulation;

(b) as a 'registered' EU design, if it is registered in accordance with the procedures laid down in this Regulation.

The EU design has a unitary character. It produces equal effects throughout the Union.

The European Union Intellectual Property Office (Office) carries out the tasks assigned to it by the Regulation.

Requirements for protection

The protection of a design by an EU design is only ensured if it is new and has individual character. A design applied to a product or incorporated into a product which constitutes a component of a complex product is considered new and has individual character only to the extent that: (a) the part, once incorporated in the complex product, remains visible during normal use of that product, and (b) the visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

Duration of protection

A design which meets the requirements shall be protected by an unregistered EU design for a period of three years from the date on which the design was first made available to the public within the Union.

Protection of a registered EU design will arise upon registration by the Office. A registered EU design will be registered for a period of five years calculated from the date of filing of the application for registration. The right holder may renew the registration, for one or more periods of five years each, up to a total term of protection of 25 years from the date of filing of the application for registration.

Effects of the EU design

The right to an EU design belongs to the creator or the creator's successor in title. Protection covers the features of the appearance of a registered EU design that are visibly represented in the application for registration.

The Regulation defines the rights conferred by the EU design. It contains a repair clause stipulating that protection shall not be conferred on an EU design which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used for the sole purpose of the repair of that complex product so as to restore its original appearance.

The repair clause shall not be invoked by the manufacturer or the seller of a component part of a complex product who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the commercial origin, and the identity of the manufacturer.

The manufacturer or seller of a component part of a complex product shall not be required to guarantee that the component parts they make or sell are ultimately used by end users for the sole purpose of repair so as to restore the original appearance of the complex product.

Invalidity

The Regulation sets out the circumstances in which an EU design may be declared invalid. It specifies that an EU design may be declared invalid if it:

- is in conflict with a prior design already disclosed and protected before its filing or priority date;

- constitutes an improper use of items protected by Article 6 ter of the Paris Convention for the Protection of Industrial Property or of badges, emblems and escutcheons which are of public interest without authorisation from the competent authorities.

System promotion

The Regulation underlines that, as a complement to the administration of the EU design system, it is essential that the Office adequately promote that system with a view to raising awareness and improving understanding of the possibility, value and benefits of obtaining and using design protection at Union level.