New EU Design law to overhaul repair clause and open up for digital markets

The draft EU Design Regulation, which amends the EU-wide Registered Community Design (RCD) – renamed as EU Design – and the draft Directive, which harmonises national design law between member states, both include a repair clause for spare parts that means design protection will no longer be conferred to ‘must-match’ spare parts, whose appearance is dependent on the appearance of original parts.

Florian Traub of Pinsent Masons said: “The introduction of an EU-wide ‘repair clause’ into the harmonised design law will open up and increase competition especially in the automotive spare parts market. If the proposal becomes law, it will become legal to reproduce identical ‘must match’ car body parts for repairs. However, a transition period of ten years for existing designs will ensure that the industry can prepare for the change.”

Fabian Klein of Pinsent Masons added: “While the automotive sector is of course at the heart of the discussion around the repair clause, it should not be overlooked that this might be relevant for other areas as well, ranging from aeroplanes and trains, to furniture and lamps, sanitary ware or household electronics. Considering that the EU green deal makes reparability one of its key goals, the regulation could have a wide area of application”.

The reform package has been introduced by the European Commission with the primary objective of making the parallel systems for protecting RCDs and national designs more complementary and interoperable. The proposed legislation simplifies and streamlines procedures for obtaining RCDs and national registered designs to encourage business to engage with the designs system in the EU more readily. In addition, the legislation makes some substantive changes to design protection itself, for example by broadening its scope in response to technological advances and removing the visibility requirements for design features. The overall objective is to make registered designs as a form of intellectual property (IP) protection more relevant and attractive to business.

The new draft Directive and draft Regulation broaden the definition of the terms “product” and “design” respectively, so that 3D printing, the metaverse and other technological advances are included in their scope. A “product” is defined as “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a digital form”. The new definition of “design” meanwhile, includes movement or other animation of features that contribute to the appearance of a design.

Klein said: “If these changes are in fact implemented, design rights will take another big step in becoming one of the prime intellectual property rights and establish themselves even more as an alternative to traditional trademark or copyright protection. Not only will the system be more accessible, less complex, and less costly but also the scope of potential products that can obtain protection will be widened with a view to including digital goods – which of course are now more and more important with new playing fields like non-fungible tokens (NFTs) and the metaverse.”

The draft Directive and draft Regulation also introduce measures to crack down on illegitimate 3D printing. According to both, only a rights holder can authorise the “creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product”. The new right applies to 3D model creators, online 3D printing platforms, and consumers. A new exclusive design right against goods in transit will also be introduced by the reforms, with the right holder entitled to enforce their design rights against goods that have not been released into free circulation in the EU.

Gill Dennis of Pinsent Masons said: “The legislation will not impact the designs system in the UK. That is the subject of a separate review by the UK Intellectual Property Office, and a consultation on the details of possible reform are not expected until late 2023/early 2024."

“Interestingly, although the UK intends to reform its designs regime to take advantage of Brexit opportunities, the country may actually find itself somewhat left behind in terms of consulting on the substance of proposed reforms and implementing them. While the changes will likely be broadly parallel to those adopted by the EU, there will be some key divergence too, which businesses must track closely,” Dennis added.

The legislation is not yet in force. The European Commission is inviting interested parties to submit views on it before 23 January 2023. The legislation will then be sent to the European parliament and the Council for formal adoption. 

“It has taken a significant time for the European Commission to draft this new legislation in such a way as to balance the competing requirements of all those interested in the designs system in the EU. We expect, therefore, that the legislation will be enacted broadly in this current form without significant amendment. In practical terms, the legislation will bring opportunities by enabling businesses to obtain registered design protection in the EU more cheaply and easily. When there is confirmation of the date on which this legislation will come into force, that will be a good time for businesses across all sectors to review their IP portfolio and assess the extent to which it could be bolstered by design protection,” said Dennis.