Two studies were recently commissioned by the European Commission for
the purpose of reviewing and assessing the effectiveness of design protection
systems in Europe. One was conducted from the economic standpoint and the other
from the legal perspective.
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on
the legal protection of designs sought to approximate and harmonize the laws of
the Member States relating to designs. Subsequently, in 2001, the creation, in
line with that Directive, of the system for the protection of Community designs
constituted a milestone in that it permitted unitary protection to be obtained
in all the countries of the EU through a single application. The first
applications were filed at the EUIPO (then OHIM) in 2003.
purpose of the study carried out from the legal perspective was to determine
whether the current EU design protection framework is contributing to the
strategy as regards innovation and, if appropriate, to make recommendations.
The goal of that strategy is to create an environment wherein it will be easier
to transform ideas into products, thus favouring economic growth and employment.
One very positive conclusion arising out of the study
is that a high degree of harmonization has been reached in various aspects
of the design system thanks, to a large extent, to the power of convergence
resulting from the practice and decisions of the EUIPO relating to designs. In
this regard reference is made to the convergence programmes of the EUIPO and to
the agreements between the EUIPO and various national patent offices of EU
Member States for the establishment of common practices in the field of
The study team also highlights the efforts made by national patent
offices and courts to bring their decisions into line with the interpretations
of the EUIPO and the EU Court of Justice.
At the same time, some controversial points have emerged, among
them the very definition of design, the concept of functionality and the
notions of disclosure and scope of protection.
Among the recommendations made by the study team, the need to
clarify the concepts of individual character and industrial sector may be
highlighted. It is suggested that, when determining the individual character of
a design, national patent offices and courts should also refer to the nature of
the product, the manner of use thereof, the purpose for which it is intended and
the industrial sector to which it belongs or where it circulates.
Another recommendation is that the current notions of visibility and normal use be reviewed and that the definition of design should signify that all designs should be visible in order to qualify for protection. Also noteworthy are the recommendations made with respect to the graphic representations. In this regard, the EUIPO's CP6 Convergence Programme has already addressed the issue of corvengence in the graphic representaation of a design.
The study also deals with two key issues connected with design
protection: 3D printing and spare parts. 3D printing is a relatively
recent area of technology whose impact extends not only to designs but also to
other forms of IP such as patents, trademarks and copyright. The study team
takes a very cautious approach to this subject, stressing the need for deeper
analysis from all standpoints and making recommendations regarding the possible
adoption of provisions on direct or indirect design infringement.
The question of spare parts had already been addressed in Directive 98/71/EC which put in place the transitional “freeze plus”
solution. This system allowed each country to maintain its existing legal
provisions on the subject but also to make changes provided that their goal was
to liberalize the market for component parts used for the purpose of repairing
complex products. However, national laws are not harmonized. In some countries,
and in the case of EU designs, it is not possible to exercise the rights
derived from the design of component parts of complex products upon whose
appearance the protected design is
dependent for repair purposes. In contrast, it is possible in other countries,
such as France and Germany. The study team strongly suggests that this
situation be remedied and recommends that the spare parts issue be addressed in
conjunction with that of 3D printing, as this technology may impact the
manufacture and distribution of spare parts.
As Directive 98/71/EC is about
to come of age and over 13 years have elapsed since the system for the
protection of Community designs was implemented at the EUIPO, an updating
process was by now called for. What the Commission has therefore done is call a
pause in order to evaluate the current situation and propose improvements for
the consideration of all parties with an interest in the design protection