Following an evaluation of existing design laws in the EU, the European Commission has recently announced proposals for a revised new EU Regulation and Directive on designs. The proposed revisions are intended to deal with a number of shortcomings that have been identified in the existing EU legislative framework, and to modernise and streamline design protection across the EU. In particular, the Commission suggests that its proposals will make design protection in the EU cheaper, faster, and more predictable.
The UK Intellectual Property Office has also been engaging in a review of UK design law and the future framework for protection and enforcement of designs in a post-Brexit environment. We have previously discussed the Government's Call for Views from stakeholders on the operation of the UK designs framework and its response to the feedback it received. While there are no concrete proposals for reform of UK design law yet, a formal consultation had been anticipated to take place. However, we anticipate progress on the consultation will slow down as the UKIPO focuses its attention on the current review of retained EU IP laws (in the form of both legislation and case law), as part of the assessment required under the proposed Retained EU Law (Revocation & Reform) Bill. We discussed that Bill in our recent article, including the impact it may have in terms of focusing UKIPO resources.
Proposals to reform EU design law
Specific proposals at the EU level include:
- Improved access to design protection, particularly for smaller and medium sized businesses, through simplified design registration procedures. For example, proposals include provisions to modernise existing design representation requirements by allowing businesses to submit video files with their applications. The Commission also plans to reduce registration costs e.g., by permitting applicants to combine multiple designs in one application and through a proposal to lower fees for the first ten years of protection.
- Levelling the playing field for businesses, by increasing harmonisation and improving the interoperability of national and EU rules on designs. Member States' parallel protections for unregistered designs will be removed, the application process will be streamlined, and an exhaustive list of grounds for non-registrability will be applied consistently across Member States.
- Aspects of modernisation and future-proofing of the framework. This will include a change in name from "Registered Community Design" to "Registered EU designs", to align with the EU Trade Mark. It will also include updates to key definitions such as 'design' and 'product' in order to ensure that they are future-proofed against technological developments. For example, the definition of a 'product' will be broadened out to specifically refer to items not currently mentioned such as: the spatial arrangement of items intended to form, in particular, an interior environment, and graphical user interfaces. The new Regulation also seeks to enable design holders to address more effectively the challenges brought about by increased use of 3D printing technologies - by making it clear that creating, downloading, copying and making available of any medium or software recording the design for the purpose of reproducing a product that infringes a design, will amount to use of a design for which the design owner's consent is required. New defences to design infringement will also be introduced, including referential use, and acts carried out for the purpose of comment, critique or parody.
- Introducing a 'repair clause' into the Design Directive, to permit the reproduction of original designs for the purposes of repairing complex products, e.g., in the automotive sector. The Commission has demonstrated a clear policy aim to increase competition in the spare parts sector – particularly in relation to cars. Existing rights holders, however, may be reassured in that the proposals include a ten-year transitional period for existing designs.
The proposed Regulation and Directive will now be considered by the European Parliament and the European Council, in accordance with the EU's ordinary legislative procedure. The Commission has invited feedback by 23 January 2023 for both the new Regulation and the Directive). It has also opened a feedback period (closing on 4 January 2023) in respect of a draft delegated Regulation relating to implementation of the new Designs Regulation.
The existing EU and UK provisions on the protection of designs are (overly) complex, a situation that is not helped by the uncertainty caused by overlapping regimes, as well as the risk of potential gaps in protection. As the EU and UK both carry out reviews of their respective design frameworks, the opportunity for divergence introduced by Brexit may only increase and so design-led businesses will hope that future consultations will properly consider and address these issues.