Design law in transformation: The most important innovations of the EU reform and their implications

I. History: A marathon with obstacles

The process has taken around ten years - now the time has come and the new EU design law package has been officially adopted.

The EU Commission's initial impetus to reform EU design law came in 2014, after which the Commission obtained numerous opinions and addressed various aspects. Criticisms included outdated and complicated procedures, legal uncertainties due to different national regulations and a lack of interoperability with the EU design system, as well as a lack of adaptation to the digital age. The evaluation ultimately resulted in concrete proposals for a new Design Directive and for amendments to the existing Community Design Regulation, which were introduced into the legislative process at the end of 2022.

On 14 March 2024, the EU Parliament adopted the legislative proposals for two regulatory instruments:

• New Design Directive (recast of directive 98/71/EC) (“Design Directive”), which replaced Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998 on the legal protection of designs.
• New Regulation amending Council Regulation (EC) No 6/2002 of December 12, 2001 on Community designs and repealing Commission Regulation (EC) No 2246/2002 of December 16, 2002 (European Union DesignRegulation, “EUDR”).

The new legal acts enter into force on the twentieth day following their publication in the Official Journal of the European Union. The Member States have 36 months to take the necessary measures to implement the Design Directive on the legal protection of designs. The EUDR will apply directly throughout the EU four months after its entry into force.

II. Reform: More than just a name change

The reform is already reflected in a new name. The outdated and often confusing term “Community design” has been replaced by the term “European Union design” (“EU design”) (Art. 1 (1) no. 1 EUDR). Overall, the innovations are primarily aimed at simplifying the design system and making it more accessible and efficient, as well as updating the regulatory framework in light of developments in relation to new technologies on the market (see Recital 6 of the Design Directive and Recital 7 of the EUDR).

1. Extended scope of protection for designs

In addition to the name change, the terms “design” and “product” are also redefined (see Art. 2 Design Directive and Art. 3 EUDR). This results in an extension of the scope of protection for designs.

In particular, new forms of appearance that have emerged in the course of digitization should be covered, such as dynamic or fluid and purely digital design representations - as long as they can be visibly reproduced and made accessible to the public through publication or inspection.

The term “design” will be defined as “the appearance of the whole or a part of a product resulting from the features, in particular, the lines, contours, colours, shape, texture, materials of the product itself and/or its decoration, including the movement, transition or any other sort of animation of those features”.

One of the new features is that the movement of features, their transition to other forms of appearance or other types of feature animation will also be covered.

In addition, the term “product” has been expanded to include “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including [...]”.

What is new? In particular, spatial arrangements of items as well as graphic works and graphic user interfaces are also covered as products. This means that the appearance of digital spaces or items (e.g. in computer games) will also be eligible for design protection as well as items of the metaverse or NFT objects.

Computer programs, however, are still excluded from the definition of a product. Their protection is governed by copyright law.

The requirements for the representation of the design have also been adapted accordingly. Pursuant to Art. 26 (1) Design Directive, the design must be represented in any form, whereby the representation can be static, dynamic or animated and, in addition to drawings and photographs, can also be made by using videos or computer imaging and modelling.According to Art. 26 (2) Design Directive, the representation must show all aspects of the design in one or more views. Further specifications, in particular with regard to the type and number of views to be used, are still tobe defined (see Art. 26 (6) Design Directive).

Previously, Art. 4 (2) of the Implementing Regulation (Regulation (EC) No. 2246/2002)stipulated that a maximum of seven views could be reproduced per design application. In addition, a single photographic or other graphic representation could only show one view.

In light of the new scope of protection for designs and the new means of reproduction, particularly in the form of videos, the current restrictions are likely to pose challenges for future applicants. If the restrictions are too narrow, there is a risk that the extensions of protection will ultimately be undermined.

It is also unclear to date how far the protection of the individual product extends and how the individual items of protection relate to each other, in particular whether, for example, a dynamic or fluid representation constitutes individual character and thus also gains protection for any static representation of the same product.

It therefore remains to be seen what the further specifications will be and how the courts will position themselves in this respect.

2. Extended rights: closing protection gaps

a) Regulation concerning 3D printing technologies

With the increasing development of 3D printing technologies in particular, it quickly became clear that the previously applicable design law had gaps in protection in this respect. For example, the mere sending of files to a consumer to enable him to make a design infringing product for private use with a 3D printer does not exploit the appearance of a product and thus did not constitute design infringement under previous law. It was therefore not possible to take action against the sender of the file.

The legislator intended to put a stop to this by extending the prohibition rights of the design proprietor inArt. 16 (2) (d) Design Directive and Art. 19 (2) (d) EUDR (see recital 27 Design Directive and recital 14 EUDR). The latter can now also prohibit third parties from “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a [design-infringing]product [...]”.

It remains to be seen whether this regulation will actually close the protection gap or whether there will be opportunities to circumvent it. This will depend in particular on how courts interpret the rather unclear wording “which records the design”.

Today, there are several technical solutions for printing a 3D object. The first requirement is to have a 3D model. However, the 3D printing software required for printing often works by dividing a 3D model into thin slices and translating the model file into the format or control language of the 3D printer. To execute the print, the software sends specific print parameters or commands to the printer. Whether this process of creating the 3D print, which is downstream from the creation of the 3D model, should also be covered by the new regulation will therefore be a matter of interpretation.

With regard to the new regulation, the Max Planck Institute for Innovation and Competition had noted in its position statement on the proposals for the design law reform of 23 January 2023 that other frequently occurring cases of indirect infringements, in particular through the mere distribution of media or software with which the design is recorded, solely for the purpose of display on computers or smart devices and not to enable the manufacture of the product, would not be covered by the wording of the new regulation. However, the legislator has stuck to the narrow wording.

b) Transit rule

In addition, a “transit rule” corresponding to EU trademark law is added to facilitate the fight against product piracy. According to Art. 16 (3) Design Directive and Art. 19 (3) EUDR, right holders are permitted to prevent the transit of infringing products through the territory of the EU and their movement in all customs situations, even if such products are not intended to be placed on the market in the Union (see also Recital 29 Design Directive).

3. Restriction of rights: The new repair clause

In addition to the extensions of protection, there are also restrictions – in particular a new repair clause. This clause is intended to ensure comprehensive harmonization of the statutory exceptions in the spare parts market – at EU level and at national level with regard to EU designs and national designs.

In Germany, a repair clause was introduced in Section 40a of the German Design Act in 2022 following a heated debate. This clause is already essentially in line with the new EU regulations, although the wording differs slightly. The changes compared to the previous legal situation will therefore primarily affect those Member States that did not previously provide for a repair clause. This applies in particular to Bulgaria, Denmark, Estonia, Finland, Croatia, Lithuania, Malta, Austria, Portugal, Romania, Sweden, Slovakia, Slovenia, the Czech Republic and Cyprus. In this respect, the new clause ensures greater legal certainty and interoperability of national design systems within the EU.

In order to allow industry and design proprietors to adapt to the changes, Art. 19 (4) Design Directive provides for a transitional period of 8 years from the date of entry into force of the Directive — slightly less than the 10 years originally provided for in the draft. During this period, the repair clause cannot be invoked against designs for which registration was applied for before the date of entry into force of the Design Directive.

a) Prerequisites

The repair clause now incorporated in Art. 19 Design Directive and Art. 20a EUDR allows manufacturers of spare parts to use protected designs to produce and market so-called must-match spare parts that reproduce registered designs. However, the clause only applies under certain conditions:

• The item is a component part of a complex product.
• The design of the component part depends on the appearance of the complex product (so-called “must-match” spare parts).
• The spare part is used exclusively for the purpose of the repair of the complex product so as to restore its original appearance.
• The manufacturer or seller of the component part must inform consumers of the commercial origin and identity of the manufacturer of the product by means of a clear and visible indication on the spare part or in another appropriate form.

The controversial issue with the former repair clause was whether it only covered shape-related component parts, i.e. component parts whose design is predetermined by the design of the rest of the product (e.g. parts of the bodywork, mudguards or hood of a vehicle) – or also shape-unrelated component parts, such as the rim of a motor vehicle. The ECJ had affirmed the latter in the context of the interpretation of the previously applicable repair clause of Art. 110 (1) CDR (see ECJ, judgment of 20 December 2017, C-397/16, C-435/16 – Acacia v AuAnlagedi and others and Acacia and others v Porsche). In this respect, it is to be welcomed that the legislator has now provided clarity and limited the clause to shape-related component parts.

With regard to the requirement that the spare part is used exclusively for the purpose of repair, the supplier or manufacturer of the component is subject to strict duties of care with regard to compliance with the purpose of the repair in accordance with the aforementioned case law of the ECJ (see ECJ, judgment of 20 December 2017, C-397/16, C-435/16, para. 85 – 89 –Acacia/Audi and others and Acacia and others/Porsche). Accordingly, the supplier or manufacturer must inform its customers about the use of a design and the purpose of the repair. If the supplier or manufacturer of the component knows or could have known that its customers do not meet the conditions of the repair clause, it must refrain from supplying them altogether.

Furthermore, the Higher Regional Court of Düsseldorf (Germany) recently stated that the supplier or manufacturer can only prove its intention to use the spare part exclusively for repair by demonstrating how it can ensure that the part it supplies is only used as a repair spare part (Higher Regional Court of Düsseldorf, judgment of 13 June 2024, 20 U 291/22, para. 46 – Car key housing).

In principle, these requirements should also continue to apply with regard to the new repair clause. In this respect, only Art. 19 (3) Design Directive and Art.20a (3) EUDR provide relief, according to which the supplier or manufacturer of the component is not obliged to ensure that the enduser uses the spare part exclusively for the purpose of repair. However, the due diligence obligations will probably continue to apply with regard to purchasers of the supplier or manufacturer.

b) Criticism

The repair clause was primarily driven by the European Green Deal, which aims to reduce the consumption of raw materials and minimize waste in order to tackle the climate crisis and ensure greater sustainability. The repair clause is intended to promote competition in the spare parts sector in order to promote repairs and the circular economy.

Nevertheless, the introduction of a harmonized repair clause was highly controversial, particularly in Germany. Opponents see this clause as undermining the absolute protection provided by design law. In particular, it disregards the purpose of design protection, which is to create an economic incentive for innovation and to protect the investment of the design proprietor.

The intentions behind the legal regulation are understandable. But is the clause at all suitable for achieving the legislator's objectives? It may indeed be questionable whether more competition in the spare parts market will ensure greater sustainability, especially if there is no guarantee that the spare parts are of the same quality as the original. Cheaper spare parts that are of inferior quality and therefore have to be replaced more frequently would lead to more waste and therefore are contrary to the purpose of the regulation.

Further, the wording “protection shall not be conferred on a registered design [...]” as an exclusion of protection rather than as an exception to protection failed. It is generally accepted that the clause acts as a statutory exception to protection by exempting certain actions in relation to component parts of complex products for repair purposes. This also follows from recital 34 Design Directive and recital 19 EUDR.

It is also not plausible why the restriction in paragraph 2 only applies to manufacturers and sellers if they have not sufficiently informed the consumer. There may certainly be constellations in which a spare part identical to a protected design is used by a third party who is not the manufacturer or seller. For example, if a service provider whois not also the manufacturer or seller, installs such a spare part and there by places it on the market. But should the service provider then be allowed to invoke the repair clause, even if the consumer was not sufficiently informed? The case constellations may be rather rare. However, there is a risk of gaps of protection of designs.

In addition, the repair clause could be inconsistent with other laws governing other industrial property rights as those do not provide for a repair clause.

With regard to trademark law, the ECJ recently clarified once again in a decision of 25 January 2024 (Case C-334/22 – Audi AG/GQ) –  which was still based on the former repair clause in Art. 110 CDR –  that the previously applicable repair clause regarding design law is neither directly nor by analogy applicable in trademark law.

The case concerns spare parts of a radiator grille for a vehicle which contain an element intended for the attachment of the well-known “Audi rings” and whose shape is identical or similar to this emblem (“Audi rings”), which is protected as a trademark.  

Contrary to the Advocate General, the ECJ assumes that the requirements for trademark infringement can be met in the case at hand and ultimately confirms this. The exception under Art. 14 (1) (c) EUTMR does not apply, according to which the use of a trademark of the original manufacturer of a spare part may be permitted if the use of the respective trademark is only made as a reference to the intended purpose of a product as an accessory or spare part. However, there is no such referential use in the present case, since the shape of the element on the radiator grille has been chosen solely for the purpose of marketing a radiator grille which is as close as possible to the original radiator grille. A repair clause, as provided for indesign law, does not exist in trademark law. In this respect, the ECJ also emphasizes that the clause cannot be applied by analogy.

In her Opinion on the aforementioned decision, Advocate General Medina suggested that the repair clause should be taken into account indirectly, for example when assessing trademark use, in order to avoid contradictions between trademark and design law. According to the Advocate General, the sale of spare parts with an element similar to the trademark for the purpose of affixing the trademark emblem could not constitute trade mark use in certain circumstances of the individual case taking into account, in particular consumer perception, certain sales conditions and circumstances of the respective geographic market (Opinion, para. 37, 46).

A different regulation of trademark and design law is likely to lead to a shift of the discussion about the permissible manufacture and marketing of the respective spare part from design law to trademark law.

In addition, a dilemma arises in cases where both design law and trademark law are concerned, for example because the original product bears a trademark emblem of the manufacturer or a similar sign: on the one hand, trademark law prohibits the use as a trademark unless the trademark is only used as a reference within the meaning of Art. 14 (1) (c) EUTMR; on the other hand, the repair clause may not apply if the spare part differs from the original and does not give the product its “original appearance”. According to the ECJ, the repair clause only applies to visually identical spare parts (ECJ, judgment of 20 December 2017, C-397/16, C-435/16, para. 57 – Acacia v Audi and Others and Acacia and Others v Porsche). The wording of the new repair clause is identical in this respect.

In such cases, the repair clause might even be rendered meaningless. It remains to be seen whether the courts or legislators will achieve a synchronization of the restrictions on protection with regard to the spare parts market or prevent contradictions in some other way.

III. Practical implications

The new regulations on design protection have a number of practical implications. It is therefore important to familiarize yourself with the changes and adapt design protection strategies accordingly.

The following aspects are particularly relevant in practice:

1. Extended scope of protection

The new definitions of design and product offer new possibilities for protecting innovations. This should definitely be borne in mind before any design developments are published. The new design law may also be advantageous in cases where trademark protection is not far-reaching enough or has gaps. This applies in particular to dynamic or fluid logos. However, it has not yet been clarified how static and dynamic designs relate to each other and whether differences between the static and dynamic design reproduction of an identical or similar product have a legal impact, particularly in terms of novelty and individual character as well as possible design infringement. Until these questions have been clarified, it is therefore advisable to develop a smart application strategy.

2. Extended rights

European legislators are strengthening the rights of design proprietors, particularly in relation to new technologies such as 3D printing. However, the wording of the new standards may be somewhat narrow in this respect. How effective the new regulations are and, in particular, whether they provide sufficient protection will only become clear as they are interpreted by the courts. Also to be welcomed is the new “transit rule”, which should make it easier to combat product piracy (as is already the case in trademark law).

3. Repair clause

In the spare parts market, the rights of design proprietors will be more limited. For designs registered before the date of entry into force, a single EU-wide repair clause will now apply, with a transitional period of 8 years. However, the repair clause is subject to strict conditions. In this respect, particular care must be taken to ensure that design rights are not unduly impaired. In addition, a corresponding application strategy can also be useful in order to adequately protect innovations. In light of recent ECJ rulings, it is to be expected that in the near future, the legal debate will shift from design law to trademark law. Nevertheless, many questions remain unanswered. It is therefore advisable to keep a close eye on case law in order to be able to react in due time and take the necessary measures.

IV. Conclusion: What lasts a long time will finally be good?

The reform of EU design law is an important update of design protection law. In particular, the changes offer design proprietors new ways to protect their designs, extended rights, greater legal certainty within the EU and interoperability of national design systems. However, when developing designs and filing strategies, the exceptions to protection and, in particular, the new repair clause should not be ignored. It is therefore important to familiarize yourself with the new provisions, to keep an eye on the expected specifications of the legislator and to adapt your own design protection strategies accordingly.

We will be happy to advise you.