The European Commission recently published an evaluation of EU legislation on design protection. The evaluation finds that EU legislation on designs “works well and is broadly fit for purpose”. However, there are certain shortcomings, particularly in supporting Europe’s transition to a digital and green economy.
In this article we review how a selection of these shortcomings may be affecting the proprietors of EU and national registered and unregistered designs, as well as European consumers in general, and how legislative amendments, suggested by the Commission, could change things in the future.
PROTECTING DIGITAL DESIGNS
The subject-matter of design protection is determined based on the definition of the terms: “design” and “product”. A product is to be understood as any industrial or handicraft item, while a design refers to the appearance of a product resulting from certain features. When describing a physical product, these definitions are clear. However, the corresponding EU design legislation wording has not been updated since 2006 and the prevalence of digital designs has increased exponentially since that time.
The issue of digital designs raises the question whether they can be understood as products and also whether their elements are covered by the design notion (e.g. is animation a feature?).” Section 5.2.2
While it is currently possible to protect animated icons and graphical user interface (GUI) designs, guidance on how best to illustrate such designs and how their scope will be evaluated is severely lacking. Further, the current requirement for the scope of protection to be determined by seven static images is sufficient only for basic animations.
For EU design legislation to keep up with the increasingly important role that digital designs play across many industries, the Commission recommends amending the legislation to more clearly include digital designs as protectable subject matter and providing an improved means for representing such designs. For example, it does not seem unreasonable to allow more than seven views to be submitted in a design application that is related to an animated design. We envisage that it could even be possible to submit a digital animation file as the representation for an animated design.
PROTECTING CAD FILES FOR 3D PRINTING
3D printing is becoming an increasingly established technology in many industries and it seems inevitable that it will eventually break into mainstream commercialisation, if it hasn’t already. However, the Commission found that EU design legislation is yet to fully define how computer-aided design (CAD) files containing a design to be 3D printed are protected.
it remains unclear whether acts of uploading, hosting and downloading a CAD file on a publicly available platform constitute a design infringement.” Section 5.2.3
What we do know (as confirmed by the Commission’s evaluation) is that although a CAD file as such cannot be protected as a design, the digital model included in the CAD file can receive protection under design law. Also, although an individual can rely on the private use limitation to allow for 3D printing carried out privately and for non-commercial purposes, this exception does not seem to apply to supporting activities carried out by intermediaries (e.g. printing or scanning by 3D-printing bureaux or acts of uploading and sharing of 3D printing files), so such supporting activities cannot be conducted with impunity. However, the Commission highlights that it remains unclear whether acts of uploading, hosting and downloading a CAD file on a publicly available platform constitute a design infringement.
The Commission believes that clarifying the legislation surrounding the protection of CAD files for 3D printing now, i.e. before 3D printing becomes (even more) widespread, is crucial to avoid this becoming a damaging issue for designers in the future.
STOPPING INFRINGING GOODS IN TRANSIT THROUGH THE EU
The Commission notes that many stakeholders desire a broader scope of design rights to prohibit the transit of goods that infringe EU design rights through EU territories, even if the goods are not intended to be placed on the EU market.
the current scope of design rights does not allow for an effective fight of counterfeiting in the context of goods in transit and lacks coherence with trade mark rules.” Section 5.2.3
Although prohibiting the transit of all goods infringing EU design rights through EU territories would provide clarity, it seems possible that it could unfairly hamper the transport of goods between two countries outside of the EU. A more likely amendment to EU design legislation, in the Commission’s view, would be to require the party transiting the infringing goods through the EU to prove that the goods are to be placed on the market outside of the EU. This would shift the burden of proof from the rights holder (where it is currently) to the contested goods’ holder, but still enable the free flow of trade in legitimate goods. Such an amendment has been made, and welcomed, in trade mark law and the Commission identifies a clear appetite for design legislation to follow suit.
PROTECTING SPARE PARTS
EU design legislation contains a repair clause which excludes protection for a design which constitutes a component part of a complex product used for the purpose of repair of that complex product so as to restore its original appearance.
This clause was originally intended as a temporary provision pending amendments to the legislation with the intention that rules on the protection of spare parts would be harmonised across EU member states. Two decades later we are still awaiting that harmonisation. Currently, national laws vary from state to state, resulting in considerable uncertainty in repair industries (particularly in the automotive sector) across the EU.
The Commission recognises that a lack of uniform rules on the protection of visible spare parts is preventing the completion of the single market, and accepts that harmonisation is required. However, the Commission points out that there is no clear consensus on the best solution.
Original equipment manufacturers (and the holders of design rights) argue that the repair clause unfairly deprives them of a fair return on their investment in innovation. Meanwhile, independent spare parts producers and consumer groups argue that protection of spare parts would eliminate competition in the spare parts aftermarket, thus driving up prices and reducing the repairability of products.
This in turn leads to limited choice and higher prices for consumers, and negatively impacts product reparability, going against the objectives and development of the circular economy.” Section 5.5.3
The evaluation suggests there is little to no evidence that the repair clause negatively impacts innovation and that the protection of spare parts would go against the development of a more circular economy in which we look to repair and reuse products for as long as possible. Thus, the tide seems to be in favour of spare parts producers and consumers. However, the speed with which national legislation on the protection of spare parts moves in the same direction is yet to be seen.
FEE STRUCTURE
Currently, it is possible to apply for EU registration of a bundle of related designs at the same time and receive considerable cost savings on the official fees for each additional design that is included in the bundle.
the structure of the bulk discount tends to benefit larger companies rather than SMEs and individual designers.” Section 5.3.6
The evaluation identifies that this fee structure is biased towards large companies and away from individuals and SMEs. Firstly, ‘smaller’ applicants are less likely to have a catalogue of designs which could all be registered at the same time whereas a large company may very conceivably have tens of different designs for different products being developed in parallel. This bias is expounded by the designs needing to be “related” (i.e. in the same class of the Locarno classification scheme) as larger companies are more likely to have a range of similar products all being developed at the same time, whereas smaller companies are more likely to develop related products sequentially.
The Commission proposes exploring adjustment of fee levels to increase accessibility for SMEs and individuals. One way in which we envisage this could be implemented is to offer a fee reduction for individuals and for businesses with a particular (small) size, which is a system adopted in other countries for patent filings.
The Commission also identifies that large disparities in the fee structures for design protection in different EU states is an issue that causes frustration and confusion amongst the holders of national rights. The UK already adopts a similar discounted approach for bundle filings, but we could see fee structures being further harmonised across all EU member states.
CONCLUSION
Design rights are intended for use by designers in often fast changing markets and the evaluation highlights a number of ways in which EU design legislation is not keeping up with the demands of such markets.
However, if the suggestions made by the Commission are implemented then EU design legislation would not only be “keeping up with the times” but would also be looking ahead to forthcoming developments in the design industry, thus making it an even more attractive means of IP protection for its current users and possibly capturing a wider audience of new users.
