EU Design Reform - Study Note

EU Design Reform Presented by: Professor David Musker (Centre for Commercial Law Studies) Design Reform – Timeline - 1998-2001: Directive 98/71 implemented - 2002: Regulation 6/2002 implemented - 2004-2014: Failed Commission proposal on spare parts COM (2004)0582 - 2011: Max Planck Report on the trade mark system - 2015: "Economic Review" (Europe Economics) - 2016: "Legal Review" (QM/time Lex) - 2016-2017: Implementation of the Max Planck trade mark reforms - 2020: 3DP report, Commission Staff Working Doc SWD (2020) 265 final - Nov 2022: Draft Regulation and Directive COM (2022)666, COM (2022)667 - Dec 2023: Trilogue agreement - Mar 2024: Passing, then 3-year implementation period Practically Important Changes 1. Spare Parts - Repair Clause 2. Virtual and Animated Designs 3. Unregistered Community Designs 4. New Defenses Spare Parts - Status Quo 1. REGULATION 6/2002 Art. 110: Protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19 (1) for the purpose of the repair of that complex product so as to restore its origin appearance." 2. DIRECTIVE 98/71/EC ("Design Directive") Art. 14 ("freeze-plus") a. Requires member states to maintain "existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance" b. And allows the introduction of changes "only if the purpose is to liberalize the market for such parts." 3. Recent: Germany, France introduced "repair clauses" CJEU: Acacia C-397/16, C-435/16  Art. 110 applies to all spares whether "must match" (i.e. "form dependent") or not (in that case: wheel rims)  The manufacturer / seller is "under a duty of diligence as regards compliance with the conditions" under Article 110 CDR.  This includes: 1. Information duties, 2. Use of contractual means, 3. Obligation to refrain from certain sales. Commission Proposals Article 19 Directive: Repair clause Article 20a Regulation: Repair clause (1) Protection shall not be conferred on a (1) Protection shall not be conferred on an registered design which constitutes a EU design which constitutes a component component part of a complex product, upon part of a complex product, upon whose whose appearance the design of the appearance the design of the component part component part is dependent, and which isis dependent, and which is used within the used within the meaning of Article 16 (1) meaning of Article 19(1) for the sole for the sole purpose of the repair of that purpose of the repair of that complex complex product so as to restore its original product so as to restore its original appearance. appearance. Parliament/Council Positions - Directive Article 19 Directive: Repair clause Council 12714/23 ADD 1 Article 19 Directive: Repair clause JURI Report (1) Protection shall not be conferred on a registered(1) design Removal of "upon which constitutes a component part of a complex product, upon whose appearance the whose appearance the design of the component part design is of the component dependent, and which is used within the meaning of Article 16 part is dependent" again (1) for the sole purpose of the repair of that complex product so as to restore its original appearance. Spare Part Provisions  Requirement for clear labelling as to origin (some differences of wording between Parliament and Council)  Apparent agreement to introduce only after 8 years (compromise between 10 years and 3 years) Virtual Designs 2022 Commission Design Law Proposals "'product' means any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materializes in a digital form" CDR Art 3(b), Dir Art 2(4) "The following, in particular, may be prohibited... creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product ... to be made" CDR Art 19(1)(d), Dir Art 16(2)(d) Intent? "This proposal aims to align the RCD protection system in the EU with the digital age... This would facilitate in particular the filing of new digital design types." Virtual Designs - EU/UK Current Position  Virtual Designs currently treated as registrable in EU, UK  "Design" = "appearance of the whole or a part of a product" - CDR Art 3(a), Dir Art 1(a)  "Product" = any industrial or handicraft article" CDR Art 3(b), Dir Art 1(b)   Including "typographical typefaces", "graphic symbols"  Excluding "programs for a computer" Infringement by any "use" of the design, including making, selling a product to which it is applied Effects 1. Not just EUIPO but national EU design systems 2. Both likely to permit use of digital files for 3D products 3. Expect new Guidelines, CP6 changes 4. Will UK follow suit? 5. IPO was consulting on this 6. Labor committed to staying generally in step 7. Conservatives - who knows? So may have to await next election.