European Union design reform and what it means for your business

Registered designs in the European Union (EU) are being reformed. The shape and timetable for implementing this is now confirmed with the long-awaited EU design legislation reform package having been published in the Official Journal of the European Union on 18 November 2024. This will soon lead to the modernisation and harmonisation of EU design law across the EU.

As previously reported, the scope of the reform is that of updating the current EU design protection system to modernise, clarify, and strengthen design protection. This is with the intention of ensuring greater legal certainty, improving accessibility, and enhancing interoperability of design protection across the EU.

The reform package consists of a Regulation (EU Regulation (EUDR) 2024/2822) governing the centralised, and unitary, EU registered design, and a Directive (EU Directive (EUDD) 2024/2823) that governs national design law in each member state of the EU once implemented in each state.

The Regulation will enter into force on 8 December 2024 and its applicability has been phased out into two separate periods. The first changes (Phase I), which we are discussing in detail below, will be applicable as of 1 May 2025. A second set of changes (Phase II), which need to be further developed by secondary legislation (Implementing and Delegated Regulations), will enter into force on 1 July 2026.

The Directive will also enter into force on 8 December 2024 and will have to be implemented by member states into national legislation within 36 months, i.e. by 9 December 2027.

Phase I reforms

Fundamentally, European designs and the process by which they are registered are not changing – the same registration criteria of novelty and individual character continue to apply without modification. It will still be possible to file multiple designs in a single multi-design application, EU designs will still be examined on formality grounds only, everything that could previously be protected with a design will continue to be protectable, and the maximum term of a design is maintained at 25 years.

There are a few “cosmetic” changes being introduced, such as a change of the official name to “EU Design” from “Community Registered Design” and the introduction of the design notice Ⓓ that owners of registered designs will be able to display on their products (in line with trade mark ® and copyright © practice).

There are also some structural changes to address funding and wider EU legislation. These include a new fee structure (affecting both registration and renewal fees) and the EUIPO public database will no longer display addresses and nationalities of parties and their representatives for the sake of data protection. This latter change is only applicable to new entries during Phase I, with existing entries likely to be amended during Phase II.

The main thing to be aware of is the various substantive changes, which are set out below.

New definitions of “design” and “product”

The definition of what is considered to be a “design” has been amended to include “the movement, transition or any other sort of animation” of the features of a given product, thus encompassing progressive changes of the design features that currently do not enjoy protection per se.

This definition further specifies a product as any item (other than a computer program) “regardless of whether it is embodied in a physical object or materialises in a non-physical form”. This opens the way to design protection of non-physical products and also supports the new definition of a design.

The amended definition also broadens and clarifies the list of products that may enjoy design protection, which now includes sets of articles, spatial arrangements of items intended to form an interior or exterior environment, parts intended to be assembled into a complex product, graphic works or symbols, logos, surface patterns and graphical user interfaces.

In our view, the changes to the definition of “design” and “product” represent a considerable modernisation of the current design protection system. However, practically speaking, these only update the law to reflect how practice has evolved since unitary EU designs were introduced and what has been permitted by the EUIPO for some time.

One change flowing from the definition changes that is more substantial is that design owners will be able to protect, for example, transitions within graphical user interfaces (GUIs) more easily. Currently, these are reached by the submission of sets of static images, which have, by nature, a limited scope since they do not render the (virtual) reality of things. This is achieved by the reforms intending to permit other forms of submission to offer an alternative to only using static images. We will have to wait for Phase II to find out how this will be implemented, however.

Overall, while there are obviously some exceptions and limitations, particularly in connection with component parts as detailed below, the system now clearly permitting GUIs as well as physical or virtual environments (composed of different items) and parts of complex products is a significant advance.

Protection offered by EU designs

For the above changes to be not only accessible and enforceable but also practical, EU designs are being given a new scope of protection. This adapted scope granted by EU designs is defined by the features that are shown visibly in the design, as opposed to visible at all times during the use of the product. This will probably open the door to design protection for products such as interior parts of clothing, fillings of industrial foodstuff, etc., provided that such products satisfy the other registrability requirements.

In connection with this, it is worth noting that in line with current regulations, the non-visibility requirement does not apply to component parts of a complex product. These must remain visible during normal use. (A good example of a component part of a complex product provided by the EUIPO is the bumper of a car.)

Rights of owners

The reforms aim to align the scope of design protection and enforcement with that of EU and national trade marks. New infringing uses of a design are identified, namely those that consist of creating, downloading, copying and sharing or distributing to others any medium or software that records the design.

This is particularly relevant for 3D printing, as the new norm aims not only to protect the 3D-printed object per se, but any unauthorised use of the medium or software that serves to reproduce the design will be considered an infringement. Similarly, the new provisions will allow design holders to take action against copies of their designs made via 3D printing or similar means.

Additionally, the updated law now allows design holders to prevent counterfeit products from passing through the EU without being released for free circulation in the EU market.

Limitations on monopoly

Alongside providing new rights, the new Regulation sets out two new limitations on the exclusive rights offered by EU designs. This formally broadens the list of third-party uses of a registered design that do not constitute infringement, to allow for product interoperability and to safeguard the right to freedom of speech. These are:

• Acts carried out for the purpose of identifying or referring to a product as being provided by a design holder
• Acts carried out for the purpose of comment, critique, or parody, as long as these are in line with fair trade practices

While some design owners may not welcome these provisions, it continues a trend implemented in other, similar, laws, so is unlikely to surprise.

Repair clause

The current Regulation includes transitional provisions on spare parts. The new Regulation fixes and finalises those provisions. This is achieved by new provisions specifying that EU designs do not protect component parts of a complex product if those components are solely used for repairing purposes aimed at restoring the original appearance of the product. In other words, design protection cannot be enforced if the appearance of the component part is dependent on that of the complex product.

Importantly however, limits have been placed on this provision, which centre on the components used in a repair being required to include some way of identifying the commercial origin and manufacturer for the new repair clause to apply. This places a significant restriction on how easy it will be for spare part producers to operate.

Similar provisions are included in the Directive. At present, legislation on spare parts is not harmonised across the EU, which has led to situations where design owners could secure rights on spare parts in some countries, but not in others (and not at an EU-wide level). Thus the reforms include similar provisions in the Directive that aim to grant more legal certainties and equality of rights in connection with spare parts, balancing out disparities within the market.  It must be noted however, that the Directive provides for a transitional period of eight years starting in December 2027, during which existing national rights on repair spare parts will continue to enjoy protection.

Changes in filing and examination procedure

The change to filing processes that is likely to have the most significant practical effect is that designs filed in a multi-design application will no longer be required to fall within the same general classification group, i.e. the unity of class requirement is being abandoned.

The current provisions allow applicants to submit several designs as a “bundle” within a multiple design application. This provides fee reductions but has only been possible when the various designs fall within the same Locarno class (i.e. they relate to the same type of product). The new provisions will allow designs to be filed in the same application for products belonging to different classes while still offering fee discounts. There will, however, be a maximum number of designs allowed in a multiple application. As is currently the case with UK registered designs, this will be limited to a maximum of 50 designs per application.

One more minor change to the filing process is that applicants and representatives will only be able to file EU design applications via the EUIPO. This is instead of also being able to file submissions via national offices.

Fee changes

As could easily have been anticipated, the EUIPO will implement a new fee structure. The main news regarding fees is that the current filing fee and publication fee are being combined into a single fee, formally repealing the publication fee.

Additionally, the payment of the application fee is to become a requirement to be allocated a filing date. This will require the application fee to be paid within one month of the date of submission, at which stage (formality) examination will be carried out. This will prevent situations in which examination and the granting of a filing date occur before the respective fees are paid.

Even with these changes, applicants will not see a change in the fees paid on filing for a first design in any filing unless an applicant often defers publication. There will, however, be changes to the fees payable for second and subsequent designs filed in a multi-design application. Depending on the number of designs included in any filing, applicants will either see a reduction or an increase in fees. The changes to the application fees will have a major effect on how deferment is handled though.

According to the current Regulation, requesting deferment and paying a deferment fee postpones the payment of publication fees until the point in time to which deferred publication is actively requested. If no request for publication is made and the relevant fee is not paid, the design will be considered abandoned.

With the new provisions, slightly modified deferment fees remain in place, but design holders can no longer prevent publication by non-payment of the (now repealed) publication fee. Instead, design holders will have to explicitly surrender a design they do not want to be published. Since a single application fee will now be in place, this will also group the costs of deferring publication at filing instead of spreading them over the deferment period, raising the initial costs for filing a design and deferring publication.

Grace period

The reforms update the provisions of the “grace period” for disclosures made in the 12 months preceding the earliest effective filing date (i.e. the priority date or the filing date; whichever applies).

The grace period is intended to remove disclosures from the body of prior art relevant to novelty and individual character, and thus validity, of a design registration. A disclosure is deemed to be public, and thus prior art, if it has been published, exhibited, used in trade or otherwise disclosed. Such a disclosure, however, is not taken into consideration if the disclosure derives from the owner of a design and the disclosure took place within the 12-month grace period ahead of the earliest effective filing date.

The new provisions now clarify that the grace period applies when the disclosure is either identical with or does not differ in its overall impression from the later filed design for which protection is claimed. In our view, this formalises the freedom available to designers to change immaterial details of a product during its market testing phase (i.e. the grace period), but appears to prohibit looser interpretations of the grace period of allowing any relevant disclosure to be removed from the prior art. Regardless, the updated grace period should still secure the right to obtain design protection, or as the case may be, to enforce unregistered design rights against more than merely blatant copies.

Invalidity and effect of priority

As some sensible clarifying measures, the new provisions state that one reason an EU design may be declared invalid is that it is in conflict not only with an earlier design right but also with another distinctive sign or when it constitutes an unauthorised use of a work protected by copyright. The new provisions specify that the right of priority shall have the effect that the date of priority counts as the date of the filing of the application for a registered EU design for the purpose of the provisions of the reformed Regulation.

Final thoughts

The upcoming changes will eventually lead to a more harmonised and accessible design protection system throughout the EU. In the words of the EUIPO, the reform promotes “design excellence, innovation and competitiveness within the EU by ensuring that the design protection is relevant to the digital age, become substantially more accessible and efficient […] and that it contributes to the objectives of the green transition and circular economy”.

The extent to which reform will affect design owners in terms of filing strategy and enforcement is still not clear and will only take shape once the new legal texts (including implementing and delegated regulations) come into force. It is apparent, however, that the new system will need some time to settle, and design owners will continue to see some imbalance between the scope of protection and enforceability of EU designs versus national designs, at least until the Directive is transposed into national legislation by each member state. In connection with component spare parts, such disparities will potentially last until the end of the transition period in 2032.

With so many reforms being introduced and the European design system now being in transition, we will be providing further updates in due course, so follow us on LinkedIn for more news. In the meantime, please contact Luca Colombo and Alistair Holzhauer-Barrie if you would like to discuss the potential relevance of these reforms to your business, or email our dedicated designs team at gje@gje.com.