INTA Collaborates with ECTA and MARQUES on EU Design Protection Evaluation

Published: March 3, 2021

David Stone

David Stone Allen & Overy LLP London, United Kingdom INTA Designs Committee—Design Law and Practice Subcommittee

Michael Hawkins

Michael Hawkins Noerr Alicante IP, S.L. Alicante, Spain INTA Designs Committee—Design Law and Practice Subcommittee

INTA has contributed jointly, with two other user associations, to the European Commission’s design legislation review, which is expected to lead to proposed amendments to European Union law later this year.

In 2014, the European Commission (EC) launched an evaluation of the European industrial design protection system, which included a comprehensive legal and economic assessment.

The EC’s assessment was supported by a series of studies: The Economic Review of Industrial Designs in Europe (January 2015), Legal review on industrial design protection in Europe (April 2016), and The Intellectual Property implications of the development of industrial 3D printing (April 2020).

INTA has been involved in its Design legislative review process since the beginning. The Association has benefited both from the Designs Committee’s commitment and consistent work throughout this process, as well as its presence and action directly on the ground through its Europe Office, based in Brussels. Moreover, INTA has been working closely with other user associations in its advocacy efforts on the EU designs reform, particularly with the European Communities Trade Mark Association (ECTA) and MARQUES.

In 2018, the three associations produced a Joint Paper summarizing an agreed contribution to the legal review. The recommendations in the paper included:

  • Clarifying that graphical user interfaces (GUIs) and parts thereof are not “computer programs” in the sense of Article 1(b) of the Directive/3(b) of the Regulation and are therefore eligible for design protection;
  • Introducing declarations of non-infringement as a matter of EU law; and
  • Deleting the requirement for designs to fall within the same Locarno class in order to be filed in a multiple application.

The EC published its Evaluation of EU legislation on design protection in November 2020. Taking into account the feedback received from stakeholders, the evaluation concluded that EU design law remains broadly fit for purpose. In particular, it supports design-intensive industries by providing predictable, fast, and cost-effective rights that are valid across the EU and by bringing member states’ legislation closer together.

The evaluation concluded that the system might be underused, partly due to a lack of awareness. It found that changes are needed to make the legal framework more accessible and efficient for industries, SMEs, and individual designers. The shortcomings include a lack of clarity on key elements of design protection (that is, subject matter, scope of rights, and limitations), outdated or overly complicated procedures, inappropriate fee levels, a lack of coherence of procedural rules, and a lack of harmonization for spare parts.

The legislation is also not fully adapted to the Digital Age. For example, there are problems with how to protect graphical user interfaces (GUIs) or icons as designs, how to file dynamic views of designs, and the scope of rights and the private use limitation in the context of 3D printing. There are also certain aspects of the registration system that appear to create unnecessary administrative burdens and costs for its users, including representation requirements, conditions for filing multiple applications, and the fee structure. In addition, although judicial recourse is widely used to enforce design rights, its efficiency and coherence could arguably be improved. This, according to the EC, should be explored in the context of the evaluation of the Enforcement Directive (2004/48/EC).

In late November 2020, the EC launched a public consultation on the Inception Impact Assessment (IIA) regarding the review of the Design Directive and Community Design Regulation. Despite the short consultation time frame, INTA’s Designs Committee reacted quickly and coordinated with ECTA and MARQUES to submit joint comments on the IIA.

This combined input builds on the recommendations provided in the 2018 Joint Paper and welcomes the EC’s objective of revising some aspects of EU legislation. However, the associations warn that amendments to definitions of essential notions such as “design” and the wording of what can be protected and the scope of protection should be cautiously chosen to avoid uncertainties and ambiguities. The associations support a clarification that GUIs, animated designs, and icons are eligible for design protection and changes in the legislation to properly address and fight design infringing goods in transit. They have also repeated their recommendation to introduce declarations of non-infringement as remedies in the EU design system.

The joint work by different associations, representing different user sectors and interests, has allowed their advocacy efforts to be particularly impactful and efficient. The EU has acknowledged the positive impact of these concerted efforts and the cohesive voice from users. INTA is keen to continue the collaboration with ECTA and MARQUES and other stakeholders to provide input on the EC’s legislative proposals, which are expected later this year, and advocate for changes to benefit designs rights holders.

If you have comments or questions on the reform or INTA’s advocacy efforts, please reach out to INTA’s Designs Committee.

For more information about the review of the EU designs legislation and INTA’s actions, see the INSIDE INTA video.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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