Clifford Chance

Written by Ainhoa Rey (IP trainee).

The EU design protection system reform is complete, modernising its provisions and enhancing protection, which is crucial for businesses navigating intellectual property rights in the digital age.

The EU design system was created more than 20 years ago with the aim of promoting a single market and a free competition regime for products incorporating designs and fostering innovation. Directive 98/71/EC harmonised national provisions to ensure an equivalent protection of designs among the Member States and, on the other hand, Regulation 6/2002 created an autonomous system for the unitary protection of designs at the EU level.

The evaluation of the EU legislation on design protection conducted by the European Commission in 2020 revealed certain shortcomings of the EU design system, which led the Commission to announce the need to reform it to modernise and adapt it to the digital age, and to make it more accessible, efficient and affordable to individual designers and companies.

The EU design reform finally concluded on 23 October 2024 with the publication of Regulation (EU) 2024/2822 (the Regulation) and Directive (EU) 2024/2823 (the Directive). The texts finally adopted have mostly followed the European Commission's proposal for a new Regulation and Directive, as well as the compromised texts agreed by the Council and the EU Parliament on 5 December 2023.

This article addresses the main aspects of the new Regulation and Directive.

Updated definitions of "design" and "product":

The reform has modernised the legal definitions of "design" and "product" so that the scope of protection of the design legislation covers those new designs that have emerged with new technological advances (for example, virtual products, space dispositions, animations, etc.). 

The reform establishes that (i) "the movement, transition or any other sort of animation of those features" are features of appearance that may be protected; and (ii) designs not embodied in physical products may be eligible for protection.

No general visibility requirement:

According to article 4.2 of the Regulation 6/2002 (which has not been modified), components of complex products can only be protected as designs if visible during normal use of the complex product. However, the reform finally clarifies that this visibility requirement is not generally applicable to other designs.

Although protection can only be granted to those features of appearance which are visibly shown in the application for protection filed before the corresponding office, those features do not need to be visible during the use of the product or any particular situation in order to be protected.

New grounds for non-registrability and invalidity:

Article 13 of the Directive includes new provisions to ensure that Member States can refuse protection to those designs that reproduce or misappropriate elements belonging to their cultural heritage that are of national interest (other than those covered by article 6ter of the Paris Convention). This could include, for example, monuments or groups of buildings, artifacts, handicrafts or costumes.

Regulation 6/2002 already contemplated the invalidity of those EU designs that constituted an improper use of elements of cultural heritage. However, the Regulation now specifies that this also constitutes a ground for the non-registrability of EU Designs to be assessed by the EUIPO.

Changes in the scope of protection of designs:

• New rights are established to prevent the copying of protected designs through 3D printing technologies. In particular, the reform allows the design holders to prevent third parties from "creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product" that infringes the protected design.
• Rights are also granted to design holders to prevent infringing products from moving in transit through the territory of the EU or being in another customs situation without being released for free circulation (following the reform of the EU trademark legislation).
• New limitations are envisaged on the rights conferred by the design right. In particular, design holders cannot oppose the use of their design (i) for referential use; and/or (ii) for purposes of comment, critique, or parody. In any case, such limitations will only apply if the use is compatible with fair trade practices and does not unduly impair the normal exploitation of the design.

National harmonisation of the spare parts regime:

Article 19 of the Directive finally provides the long-awaited "repair clause," which harmonises the protection regime for spare parts at the national level. Pursuant to this clause, no design protection will be granted to components of complex products (i) whose appearance depends on the appearance of the complex product in question; and (ii) that are used solely for the purpose of repairing the complex product to restore its original appearance.

However, this defence against an infringement claim cannot be invoked by manufacturers or sellers of spare parts who have not duly informed consumers of the commercial origin and identity of the manufacturer of the product to be used for the repair of the complex product.

In any event, the Directive allows transitional protection until 9 December 2032 for such national designs on spare parts for which registration had been applied for before 8 December 2024.

Administrative procedure for the invalidity of national designs: 

According to article 31 of the Directive, Member States are given the possibility of establishing an administrative procedure for seeking the declaration of invalidity of national designs (similar to that already provided for EU designs).

New designation:

Designs with effect in the EU are renamed as "EU designs", instead of "Community designs" as provided in Regulation 6/2002.

Registration symbol:

Registered design holders are given an indication (D) with which to inform the public that the marked design is registered.

Entry into force:

• The Regulation entered into force on  18 November 2024 and will apply from 1 May 2025 (except for certain provisions that will apply from 1 July 2026).
• Member States must transpose the Directive by 9 December 2027.

Understanding the requirements and scope of protection of the EU design system is essential when assessing and implementing business measures that ensure the effective protection of the assets relevant to the business and the resources invested in their creation, as well as when determining the defence strategy against potential design infringement claims.