INTA’s Ongoing Collaboration on the EU’s Proposed New Design Law

Published: January 18, 2023

David Stone Allen & Overy LLP London, United Kingdom International Amicus Committee

Over the past eight years, the European Commission has been considering modernizing the EU designs framework. This began in 2014 when it launched a comprehensive legal and economic assessment, 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). At that time, the International Trademark Association worked closely with fellow user associations, the European Communities Trademark Association (ECTA), and MARQUES, to produce a 2018 Joint Paper summarizing an agreed contribution to the legal review.

The Commission then published its Evaluation of EU legislation on design protection in November 2020. Taking into account the feedback received from stakeholders, this concluded that EU design law remains broadly fit for purpose, supporting design-intensive industries by providing predictable, fast, and cost-effective EU rights. Nevertheless, changes were proposed to make the legal framework more accessible and efficient for industries, SMEs, and individual designers. In January 2021, ECTA, INTA, and MARQUES submitted joint comments on the Inception Impact Assessment on the review of the Design Directive and Community Design Regulation, building on recommendations provided in the 2018 Joint Paper. INTA also submitted a response to the Commission’s consultation in April 2021.

Fast-forward to November 2022 when all parties were keen to review the Commission’s proposals for a revised EU Designs Regulation (EC) 6/2002 and Directive (98/71/EC), which were heralded to make the system “quicker, cheaper and more predictable.” The key changes introduced by the proposed legislation are:

  • Broadening the scope of designs to encompass new technological developments such as virtual designs;
  • Allowing users to represent designs dynamically and to combine multiple designs in one application, without the “unity of class” requirement, which should help to reduce costs;
  • Simplifying the fee structure and reducing fees for the first ten years of registration;
  • Changing the name to EU design rights (not the outdated “Community design rights”) and empowering designers to use a new “d in a circle” symbol (like ® or ©) to advertise their registered design rights more obviously;
  • Making it an infringement to create, to copy, or to distribute anything recording the design (e.g., a computer-aided design (CAD) file) for the purpose of enabling a product incorporating the design to be made;
  • Requiring member states to provide for administrative design invalidity actions, to avoid the costs and delays of court proceedings; and
  • Harmonizing rules on spare parts to open up the EU market. There will be a new EU-wide requirement for a “repair clause” at member state level, so that national design protection will not be available for “must match” spare parts.

INTA’s Designs Committee has again been coordinating with ECTA and MARQUES to review these proposals and will provide comments to the public consultation in a position paper before the deadline of January 31, 2023.

This project illustrates very clearly the real benefits in cooperating with other IP associations on legislation reviews. Because each association represents different user sectors and interests, their combined advocacy efforts have been more impactful and efficient. The Commission itself has acknowledged the positive impact of these concerted efforts and the cohesive voice from users. This coordinated advocacy effort will contribute to an EU design system that is more modern, more efficient, and less expensive for users.

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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