Reform of European design legislation published

On November 18, 2024, two particularly important pieces of legislation on designs were published in the Official Journal of the European Union. Firstly, Regulation (EU) 2024/2822 of 23 October 2024 amending Council Regulation (EC) 6/2002 on Community designs and, secondly, Directive (EU) 2024/2823 of 23 October 2024 on the legal protection of designs (recast version).

We’ve been following the legislative process on this blog (check out the post here). In this post, we review some of the main aspects of the reform.

Context

Since 2020, the European institutions have been working on the reform process for the texts governing the protection of designs, given the need to modernize the rules and improve the accessibility and efficiency of their protection.

The new legislative package consists of: i) a Regulation amending Council Regulation (EC) 6/2002 on Community designs (the “Regulation”), and ii) a Directive on the legal protection of designs (recast of Directive 98/71/EC) (“the “Directive”).

Some developments in the new legislation

The developments introduced by the Regulation include some changes to the terminology used to date. For example, in the title of Regulation 6/2022, Community designs are now European Union designs (article 1.2 of the Regulation). Therefore, in all the articles of the Regulation, the term “Community design” is replaced by “EU design.”

The texts also update the definitions of the concepts of “design” and “product” to adapt them to a reality dominated by new technologies, enabling, for example, the protection of virtual designs.

• The concept of design is defined as the appearance of the whole or a part of a product resulting from the features, in particular, the lines, contours, colors, shape, texture, materials of the product itself and/or its decoration, including the movement, transition, or any other sort of animation of those features (article 2.3 of the Directive; article 3.1 of the amended Regulation).

•  The concept of product, is understood as any industrial or handicraft article, except computer programs, regardless of whether it is incorporated in a physical object or materializes in a non-physical form, including: a) packaging, sets of articles, spatial arrangement of items intended to form an interior or exterior environment, and parts intended to be assembled into a complex product; b) graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces (article 2(4) of the Directive; article 3(2) of the Regulation).

Another development concerns ius prohibendi right of the holder of the design, as both the Regulation and the Directive grant the possibility to oppose the creation, downloading, copying and sharing or distribution to others of any materials or software that records the design for the purpose of enabling a product to be made that incorporates or applies the protected design without consent (article 16.2(d) of the Directive; article 19.2(d) of the Regulation).

Although the design holder’s opposition right is broadened to a certain extent, new limits are also introduced. Thus, the rights granted to the holder of a registered design cannot be executed in respect of acts carried out for the purpose of identifying or referring to a product as that of the design right holder, or against acts carried out for the purpose of comment, criticise, or parody (article 18.1 of the Directive; article 20.1 of the Regulation).

Finally, for the purpose of repairing a complex product so as to restore its original appearance, the new legislation includes a repair clause similar to the one already established in transitional provision 110 of the 2002 Regulation. The repair clause is introduced by articles 19 of the Directive and 20a of the Regulation. Therefore, another limitation is established for the design right holder as protection is not granted to a registered design “which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used (…) for the sole purpose of the repair of that complex product so as to restore its original appearance.”

Next phases

The rules transposing the Directive into the internal law of the Member States must be put in force until December 9, 2027.

With regard to Portugal, work is underway to review the Industrial Property Code (which governs industrial designs) and the second official meeting of the Working Group was held last Tuesday, October 15. While this group was not established specifically for this purpose, it is considered that the new developments arising from the Directive should be integrated into the new code.

The Regulation will enter into force 20 days after its publication in the Official Journal of the European Union and will apply from May 1, 2025, except for certain provisions that will apply from July 1, 2026.