EU Commission evaluation of EU legislation on design protection
In 2014, the Commission launched its first overall evaluation since the 1998 Design Directive and 2002 Community Design Regulation became effective. A comprehensive legal and economic assessment of both substantive and procedural design law, supported by a series of studies, led to the publication of a Commission report in November 2020.
The Commission report indicates that the EU design legislation works well overall, but also revealed a number of shortcomings the Commission intends to address in order to make the legal framework fit to support the digital and green transition of EU industry, and substantially more accessible and efficient for industries, SMEs and individual designers. The main points are summarized below.
A. Protection of designs in the digital age
- Definitions of ‘design’ and ‘product’
The evaluation shows that the EU design legislation proves to be effective in that it offers reliable protection tools and serves the needs of multiple design industries. Predictability, speed and cost effectiveness of the EU design protection system was particularly appreciated by the respondents. However, the Commission acknowledges that the relevance of the design acquis has been impacted by technological advancement. Concerns were raised as to digital designs, and whether they are covered by EU design legislation. It is unclear whether virtual designs, animated designs and graphical user interfaces can be understood as “products” and whether their appearance is covered by the notion of “design”. Consequently, the report suggests to revise the subject-matter of protection. Providing a more systematic categorisation of eligible design types, together with tailored representation requirements, is one of the options to be explored in the design reform procedure.
- Registration formalities
Similarly, it was found that the current framework for representing designs no longer satisfies the needs of applicants. It is currently not possible, for instance, to register a dynamic view of a design. The report calls for other means of representation, including 3D digital representations and video files, to protect a wider range of designs, as to enhance the effectivity of design protection.
- Impact of 3D printing
Several issues arising from 3D printing were noted in the evaluation report. First, the report notes that it is yet unclear whether design rights provide sufficient protection against copying by means of 3D printing. The report suggests to re-assess the private use exception in light hereof. In that respect, several respondents suggested modifying this exception by adding a requirement of compatibility with fair trade practices and normal exploitation of a design. Second, the report urges for clarification whether acts of uploading, hosting and downloading a computer-aided design (CAD) file on a publicly available platform constitutes a design infringement. While a CAD-file as such cannot be protected under EU design law, the digital model included in the CAD-file can. Revisions here may enhance legal certainty for both developers and users of 3D printing technology.
B. Enforcement – goods in transit
The report reveals that EU design law currently lacks effective means to challenge counterfeit goods in transit, contrary to what is the case in EU trademark laws. A majority of the respondents were in favour of enlarging the scope of design rights to also prohibit the transit of goods that infringe designs registered in the EU, even if the goods are not intended to be placed on the EU market.
C. Relationship towards other forms of IP protection
EU design legislation had set ground rules for the interaction between copyright law and design law, be it limited and leaving a lot of margin to the Member States. Nonetheless, the report questions whether this margin can be maintained in view of recent CJEU cases (Flos (C-168/09), Cofemel (C-683/17) and Brompton (C-833/18)).
The report also examines the relationship between the protection of (figurative and shape) trademarks and design, suggesting a need for further harmonisation to clarify their interaction and align design laws to recent trademark reforms with respect to dealing with the EUIPO.
Furthermore, the report suggests to extend the catalogue of limitations in EU design law in order to bring it in line with that of other IPRs.
D. Design on parts
- Definition of complex product and visibility requirement
EU design law provides that component parts of complex products can only be protected if they remain visible during normal use of the complex product. The report examines the notion of “complex product”, and makes proposals to reduce confusion at the national level. The question was raised whether consumables (e.g. a light bulb or a toner cartridge) constitute “component parts” of complex products. Although the Commission takes the view that the current rules are appropriate and coherent, the report suggests more clarity is needed on the requirement of visibility.
- Repair clause
The report further expresses a need to address the diverging national rules on the protection of spare parts, as the transitional provisions in EU legislation have not (yet) been replaced. In fact, the report further recommends extending the repair clause to copyright law in order to avoid circumvention of the repair clause through copyright. The report further points to the EU’s green transition, including the work on Ecodesign, which sets requirements for the availability of spare parts and the right to repair.
The evaluation of the EU design legislation shows that the legal framework for protection of design is fit for purpose. Nonetheless, the report reveals a number of shortcomings which the legislator will likely want to tackle when revising the design acquis. In addition to the points mentioned above, the report suggests that the legislator will want to work on raising awareness on the benefits of design protection and further simplifying the procedural rules of EU design registration.
Moving forward, the Commission
will have to take above-mentioned points into consideration in its revision of
the EU legislation on design protection, which is expected by the end of 2021 (Q4
 The Economic review of industrial design in Europe (https://ec.europa.eu/growth/content/economic-review-industrial-design-europe-0_en); The Legal review on design protection in Europe (https://ec.europa.eu/growth/content/legal-review-industrial-design-protection-europe-0_en); The Intellectual property implications of the development of industrial 3D printing (https://op.europa.eu/en/publication-detail/-/publication/e193a586-7f8c-11ea-aea8-01aa75ed71a1/language-en/format-PDF/source-124493516).