It’s not only Valentine’s Day – February’s love letter to designs

It’s not only Valentine’s Day – February’s love letter to designs.

While the world was getting flooded with roses and heart-shaped gadgets, the IP scene was buzzing about this year’s big revolution – new EU Design law. But is it really that different from what we know?

To that question, a few members of a newly formed Polish Young AIPPI Members group will try to answer as a follow-up to their February’s webinar “New Year, new me – notes from the design’s diary”.

A little bit of introduction

For more than twenty years, good old Regulation 6/2002 served as a guide to Community Designs. But with the world evolving towards the digital era, it was time to modernize the provisions and make them consistent with today’s market reality.

Finally, after years of debates, on November 18, 2024 the so-called Design Reform Package was published.

The Package consists of two acts:

⇨ a new Regulation (EU) 2024/2822 and

⇨ a new Directive (EU) 2024/2823.

What is it all about?

First, the basics. The community design will now be named EU design. Considering that we have not been living in the European Community since 2009 (Treaty of Lisbon), it is just about time to make this change.

Moreover, after many decades of having symbols related to copyright © and trademark ®, we got registration symbol for designs . The Design Package also provides us with new design and product definitions. New broadened definitions make the door wide open for all sorts of digital designs and enable protection of the appearance of things like visual effects created by light.

The Reform simplified the structure by combining fees into one registration fee. However, the simplification of fees is accompanied by their increase. If the design is successful, the increased fees should not be a burden for the design owner. In other cases, the increased fees may lead designers towards national protection rather than EU protection.

Other relevant changes are new rights related to 3D printing, new ground for non-registrability related to cultural heritage, fast track invalidity proceedings and the repair clause.

OK, so what is it with the repair clause?

A repair clause is a limitation of design right which allows the use of protected designs for the purpose of repairing a complex product to restore its original appearance. It is however applicable only if the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design is dependent.

The new Design Package – regulating the repair clause identically in both the Regulation and Directive – is set to bring about further harmonization and clarity. The new repair clause explicitly introduces a “form-dependency” requirement. It also imposes specific informational obligations on spare-part manufacturers. Conversely, such manufacturers are expressly exempt from liability if spare parts are used on the secondary market for purposes other than repair.  Resolved, there still are some questions that have to be answered.

First, the “form-dependency” requirement raises questions about its interpretationrelating to the scope of the repair clause, namely what parts are really spare parts. Second, the due diligence obligations – terms like “commercial origin” remain unclear. While the recitals state it includes at least the trademark and the manufacturer’s name, it is uncertain whether these alone suffice in every case.

Thirdly, the relation between repair clause and other intellectual property rights, mainly copyrights and trademarks, must be re-examined. Even though the repair clause relates specifically to design protection, it’s crucial to remember that copyright and trademark laws still apply.

Protected by different regimes? But how?

Cumulative protection in intellectual property law allows for the simultaneous safeguarding of a single design under multiple legal frameworks. While this strengthens the rights holder’s position, it inherently creates complexities, particularly regarding the interplay between design and copyright protection. To this day, the jurisprudence of the CJEU has been pivotal in shaping the understanding of cumulative protection, revealing persistent tensions and a lack of clear-cut criteria.

The CJEU case law has highlighted the intricacies of cumulative protection, particularly concerning the overlap between copyright and industrial design. In Flos and Cofemel, the CJEU ruled that copyright for applied art, like fashion, depends on originality, not aesthetic judgment, highlighting the distinction and potential overlap with industrial design. The Brompton Bicycle case clarified that copyright can cover technically functional designs if they show creative choices, excluding purely functional designs.

The absence of clear criteria creates legal uncertainty for businesses and creators, especially in aesthetic-driven industries. Overlapping protection risks multiple infringement claims, driving up litigation costs and hindering innovation.

With the current situation at hand, the EU Reform, underlying the relation between different regimes protecting industrial designs, faces several critical challenges: a lack of clear delimitation criteria, an incomplete harmonisation of copyright law, and a need for alignment with CJEU jurisprudence.

The Design Reform is for sure a step forward, but it still requires further efforts to clarify the complexities. The development of clear and consistent criteria is crucial to ensure a balanced and predictable legal framework that fosters innovation while safeguarding the rights of creators.

More doubts than answers?

 Is the Reform effectively modernizing European design law? Does it improve the position of designers and rights holders while maintaining an adequate balance with third-party rights?

Most amendments appear to be well received. However, despite aiming to adapt European design law to the digital age, the Reform makes only a single reference to Artificial Intelligence — specifically in the context of 3D printing. There are no provisions specifically addressing AI-generated or AI-assisted designs.

It remains unclear whether this omission represents a missed opportunity to establish a predictable legal framework for integrating AI tools into the design process, or is a deliberate choice to refrain from introducing AI-related regulations within IP-specific legislation at this stage.

As also previously noted, the EU Design Reform does not affect other IP regimes. Various aspects of products protected by EU design rights may be subject to multi-layered protection through the cumulative application of different IP rights.

For example, the repair clause and new limitations on referential use, comment, critique, and parody do not automatically legalize all such uses. Thus, significant uncertainty may arise when other IP rights come into play alongside designs. This could prompt future debate on whether the scope of protection, limitations, and exceptions should be more closely harmonized across different IP rights.

So what are we left with?

The number of changes and comments produced by the Design Package can be overwhelming. Fortunately, the applicability of the Design Package is divided into three phases. Firstly, Regulation (EU) 2024/2822 will be mostly applicable as of May 1, 2025. Then, all the provisions that require implementing secondary legislation will only be applicable as of July 1, 2026. At the end, Member States will have a period of 36 months (until December 9, 2027) to transpose the Directive (EU) 2024/2823. Thus, we still have some time to get used to the new design reality.

Although we might be sceptical about some of the changes introduced by the Reform, we are excited to observe how they evolve. Be sure that we will keep an eye on this evolution. And once we have some answers to our questions, you will be first to know.