Main changes to EU design law
1. Expanding the scope
Traditionally, design law protects the appearance of three-dimensional ‘products’, such as lines, shape, colour, and texture. Expanding the definitions aims to align with contemporary technological market realities, including:
- “Design: in addition to physical appearances, movements, transitions and other animations of these appearances can now contribute to the appearance of a product.
- “Product”: the non-exhaustive list is supplemented to include, inter alia: non-physical products (graphical user interfaces and virtual objects) and the spatial arrangement of indoor and outdoor environments (such as the layout of a shop, in addition to possible trademark protection, see Apple Store case).
2. Efficient and accessible design registration
Financial and administrative barriers will be lowered.
To begin with, the rules for filing a design application will be simplified. Thus, a design can already be registered on the filing date, even if certain documents are missing, as long as the presentation of the design is sufficiently clear. The costs associated with registration will also be simplified: no separate publication fee, no transfer fee and a reduction in the filing fee.
In addition, the restriction of “unity of class” is abolished. This allows multiple designs to be included in one application, regardless of their product category.
3. Rights attached to a registered design
- Counterfeit goods in transit
With a view to combating counterfeit goods, it is now possible for both trademark and design holders to prevent counterfeit goods from passing through the European Union, even if they are not intended for the European market.
Previously, as determined in the Philips/Lucheng and Nokia cases (C-446/09 and C-495/09), customs were only allowed to act on a “well-founded suspicion” that the goods would be traded in the EU. In the event permission to destroy the goods was not obtained, the design holder had to provide evidence that the goods would actually be sold, offered or diverted in the EU.
The new regime reverses the burden of proof: the owner of the disputed goods must prove that the design holder has no rights in the country of final destination to prohibit the marketing of the goods. If this proof is provided, the design holder loses the right to take further action.
Despite this preventive approach, some caveats can still be made, including the following:
-
- The effectiveness of this scheme is going to depend, among other things, on the will and capacity of national customs authorities, as controls and risk analysis should also extend to shipments destined for countries outside the EU. In addition, identifying counterfeiting of design rights requires some expertise – design infringements are more difficult to establish than trademark infringements. The question is whether national customs authorities have sufficient resources for this additional control obligation.
- Thus, to enjoy the benefit of the reversal of burden of proof, it is necessary for the design holder to have rights in the country of final destination. This may entail the need to register designs even in countries where they do not actually have operations.
- 3D-printing
To grant protection in the context of 3D-printing as well, acts such as creating, downloading, copying or sharing digital files or software incorporating a design will be considered use of the design. This will require prior permission from the rights holder.
- In addition to the well-known symbols for copyright ® and trademark ™, registered designs may now also bear a recognised symbol, namely .
4. Limitations and exclusion of design protection
With a view to striking a balance between the interests involved, some additional restrictions have been introduced.
- Repair clause for spare parts
Design protection no longer applies to parts used exclusively to restore a complex product, such as a car, to its original appearance. This implies that spare parts with the same appearance can be offered without infringing design rights. This exception does not apply to “tuning parts” or accessories, as this goes beyond mere restoration to original condition. However, in order to avoid deception, consumers should be informed about the origin and the fact that the parts are non-original.
- Expanding the list of permitted uses
The use of a registered design is now also permitted when the use consists of: “referential use” – in the context of comparative advertising – and “critique, commentary and parody” and artistic freedom. This addition is partly in line with the 2011 ruling of the court in The Hague, where an artist had used a Louis Vuitton handbag (also registered as a design) by adapting it in a work of art. On the other hand, the use must be compatible with fair trade practices and it must not prejudice the normal exploitation of the design.
- Cultural heritage
Member states were given the option to provide for specific grounds of non-registration and annulment in relation to elements belonging to ‘cultural heritage of national importance’, such as traditional costumes, monuments, crafts, etc.
This had previously been the subject of discussions if traditional or tribal patterns were adopted in fashion (ref. plagiarism case Walter van Beirendock / Virgil Ablob that ended up in a broader discussion on cultural appropriation).
Conclusion
For national models, the directive entered into force on 8 December 2024. Member states have until 9 December 2027 to transpose it into national law. The new regulation, relating to Union designs, will become directly applicable across the EU from 1 May 2025.
Combating counterfeiting, as in the case of goods in transit, requires in-depth expertise and cooperation with customs and legal authorities. Moreover, protecting digital designs requires a keen eye for detail and understanding of cross-border rights.
Do you have questions about the article, or are you looking for intellectual property and counterfeiting advice in general? Would you like support on registration strategies, intellectual rights enforcement, or guidance on complex international issues? If so, please feel free to contact us.
This articla was written by Daan De Jaeger and Sarah Bos.
