Changes between two versions
What changed between the draft committee report and the plenary report
From · draft committee report· 16 Jun 2023
on the proposal for a directive of the European Parliament and of the Council on the legal protection of designs (recast)
To · plenary report· 30 Oct 2023
on the proposal for a directive of the European Parliament and of the Council on the legal protection of designs (recast)
Changes to the text itself, in document order. Cover page, citations and punctuation-only edits are left out; they are under “Every difference”.
The changes · 9
Change 1
Added:A. whereas, according to the Consultative Working Party of the legal services of the European Parliament, the Council and the Commission, the Commission proposal does not include any substantive amendments other than those identified as such in the proposal and whereas, as regards the codification of the unchanged provisions of the earlier acts together with those amendments, the proposal contains a straightforward codification of the existing texts, without any change in their substance;
Change 2
Removed:Recital 7: (7) In its resolution of 11 November 2021 on an intellectual property action plan28 the European Parliament welcomed the Commission’s willingness to modernise the Union legislation on design protection in order to better support the transition to a sustainable and digital economy, called on the Commission to further harmonise the application and invalidation procedures in the Member States, and suggested to reflect upon aligning Directive 98/71/EC and Regulation (EC) No 6/2002 with a view to creating greater legal certainty. / 28 European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)) (OJ C 205, 20.5.2022, p. 26).
Added:Recital 1: (1) A number of amendments are to be made to Directive 98/71/EC of the European Parliament and of the Council22. In the interests of clarity, legal certainty, streamlining and the updating of rules in relation to market developments brought about by the developments regarding information technology and artificial intelligence, that Directive should be recast.
Added:Recital 3: (3) Design protection in national law of the Member States coexists with protection available at Union level through European Union designs (‘EU designs’) which are unitary in character and valid throughout the Union as laid down in Council Regulation (EC) No 6/200223. The coexistence and balance of design protection systems at national and Union level provides an appropriate level of legal certainty and constitutes a cornerstone of the Union’s approach to intellectual property protection.
Added:Recital 5: (5) In its conclusions of 11 November 2020 on intellectual property policy and the revision of the industrial design system in the Union25, the Council called on the Commission to present proposals for the revision of Regulation (EC) No 6/2002 and Directive 98/71/EC. The revision was requested due to the need to modernise the industrial design systems, to update them in line with market developments regarding information technology and artificial intelligence and to make design protection more attractive for individual designers and businesses, especially small and medium-sized enterprises. In particular, that revision was requested to address and consider amendments aiming at supporting and strengthening the complementary relationship between the Union, national and regional design protection systems, and involve further efforts to reduce areas of divergence within the design protection system in the Union.
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Added:Recital 6: (6) Based on the final results of the evaluation, the Commission announced in its communication of 25 November 2020 entitled ‘Making the most of the EU’s innovative potential. An intellectual property action plan to support the EU’s recovery and resilience’27 that it would revise Union legislation on design protection, following the successful reform of Union trade mark legislation, with a view to simplifying the system and making it more accessible and efficient, and with a view to updating the regulatory framework in the light of the developments in relation to new technologies on the market.
Added:Recital 7: (7) In its resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience28 the European Parliament welcomed the Commission’s willingness to modernise the Union legislation on design protection in order to better support the transition to a sustainable and digital economy, called on the Commission to further harmonise the application and invalidation procedures in the Member States, and suggested to reflect upon aligning Directive 98/71/EC and Regulation (EC) No 6/2002 with a view to creating greater legal certainty. / 28 European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)) (OJ C 205, 20.5.2022, p. 26).
Change 3
Removed:Recital 13: (13) The attainment of the objectives of the internal market requires that the conditions for obtaining a registered design right be uniform in all the Member States.
Added:Recital 8: (8) Consultation and evaluation have revealed that, in spite of the previous harmonisation of national laws, there are still areas where further harmonisation could have a positive impact on competitiveness and growth and, in particular, in terms of the increased accessibility SMEs would have to the design protection system.
Removed:It being a directive and not a regulation, the term ‘identical’ seems too strong; the term ‘uniform’, already used in paragraph 35 of the report (2021/2007), seems preferable.
Added:Recital 13: (13) The attainment of the objectives of the internal market requires that the conditions for obtaining a registered design right be harmonised in all the Member States.
Change 4
Added:Recital 19: (19) Although product indications do not affect the scope of protection of the design as such, alongside the representation of the design they may serve to determine the nature of the product in which the design is incorporated or to which it is intended to be applied. Furthermore, product indications improve the searchability of designs in the register of designs kept by an industrial property office. Therefore, accurate product indications facilitating search and increasing the transparency and accessibility of a register should be ensured prior to registration without an undue administrative burden or additional costs for applicants.
Added:Recital 21: (21) Technological innovation should not be hampered by granting design protection to designs consisting exclusively of features or the arrangement of features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality, and that designs with a technical function are not excluded from the design protection. A registered design right may be declared invalid where no considerations other than the need for that product to fulfil a technical function, in particular those related to the visual aspect, have played a role in the choice of the features of appearance.
Added:Often, designs are not mere design objects but are industrial products having a function. Design protection presents a major asset also for functional and technical products and should therefore enjoy protection.
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Change 5
Added:Recital 28: (28) In view of the growing deployment of artificial intelligence and 3D printing technologies in diverse industries, and the resulting challenges for design right holders to effectively prevent the illegitimate, easy copying of their protected designs, it is appropriate to provide that the creation, downloading, copying and making available of any medium or software recording the design, for the purpose of reproduction of a product that infringes the protected design, amounts to use of the design being subject to the right holder’s authorisation.
Change 6
Removed:Recital 32: (32) The exclusive rights conferred by a registered design right should be subject to an appropriate set of limitations, which should be listed exhaustively. Apart from private and non-commercial use and acts done for experimental purposes, such list of permissible uses should include acts of reproduction for the purpose of making citations or of teaching, referential use in the context of comparative advertising, and use for the purpose of comment or parody, provided that those acts are compatible with fair trade practices and do not unduly prejudice the normal exploitation of the design. Use of a design by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this Directive should be applied in a way that ensures full respect of fundamental rights and freedoms, and in particular the freedom of expression.
Added:Recital 34: (34) The differences in the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, in particular where the product incorporating the design or to which the design is applied constitutes a form-dependent component part of a complex product, directly affect the establishment and functioning of the internal market. Such differences distort competition and trade within the internal market and create legal uncertainty, as highlighted by the European Parliament in paragraph 33 of its resolution of 11 November 2021. The repairability of products is at the core of a sustainable economy, as highlighted in the European Green Deal and in the amendments of the European Parliament of 12 July 2023 to the proposal for a regulation of the European Parliament and of the Council establishing a framework for setting eco-design requirements for sustainable products and repealing Directive 2009/125/EC1a. / 1a Texts adopted, P9_TA(2023)0272.
Removed:For reasons of legal certainty, limitations to the exclusive rights conferred by the registration of a design should be listed exhaustively.
Added:Recital 35: (35) It is therefore necessary for the smooth functioning of the internal market and in order to ensure fair competition therein to approximate the design protection laws of the Member States as concerns the use of protected designs for the purpose of repair of a complex product so as to restore its original appearance through the insertion of a repair clause similar to that already contained in Regulation (EC) No 6/2002 and applicable to EU designs at Union level but explicitly applying to component parts of complex products only. As the intended effect of such repair clause is to make design rights unenforceable where the design of the component part of a complex product is used for the purpose of the repair of a complex product so as to restore its original appearance, the repair clause should be placed among the available defences to design right infringement under this Directive. In addition, in order to ensure that consumers are not mislead but are able to make an informed decision between competing products that can be used for the repair, it should also be made explicit in the law that the repair clause cannot be invoked by the manufacturer or seller of a component part who have failed to duly inform consumers with detailed information about the origin and identity of the producer of the product to be used for the purpose of the repair of the complex product.
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Removed:Recital 34: (34) The differences in the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the product incorporating the design or to which the design is applied constitutes a form-dependent component part of a complex product, directly affect the establishment and functioning of the internal market. Such differences distort competition and trade within the internal market and create legal uncertainty, as highlighted by the European Parliament in its resolution of 11 November 2021.
Added:Article 2 – point 5 a (new): (5a) ‘manufacturer’ means manufacturer as defined in Article 3, point (8), of Regulation (EU) 2023/988 of the European Parliament and of the Council1a; / 1a Regulation (EU) 2023/988 of the European Parliament and of the Council of 10 May 2023 on general product safety, amending Regulation (EU) No 1025/2012 of the European Parliament and of the Council and Directive (EU) 2020/1828 of the European Parliament and the Council, and repealing Directive 2001/95/EC of the European Parliament and of the Council and Council Directive 87/357/EEC (OJ L 135, 23.5.2023, p. 1).
Removed:It is worth noting that this risk of distortion of competition has been highlighted by the European Parliament previously.
Added:Article 19 – paragraph 1: 1. Protection shall not be conferred on a registered design which constitutes a component part of a complex product, which is used within the meaning of Article 16(1) for the sole purpose of the repair of that complex product so as to restore its original appearance. The use of such a component part for the aforementioned repair purpose shall be presumed.
Change 7
Changed:Recital 35: (35) It is therefore necessary for the smooth functioning of the internal market and in order toArticle ensure19 fair– competitionparagraph therein2: to2. approximateParagraph the1 designcannot protectionbe lawsinvoked ofby the Member States asmanufacturer concernsor the useseller of protected designs for the purposea ofcomponent repairpart of a complex product sowho asfailed to restore itsduly originalinform appearanceconsumers, through the insertion of a repair clause similar to that already contained in Regulation (EC) No 6/2002clear and applicable to EU designs at Union level but explicitly applying to form-dependent component parts of complex productsvisible only.indication Ason the intended effect of such repair clause isproduct toor makein designanother rightsappropriate unenforceableform, whereabout the designidentity of the component partmanufacturer of a complexthe product isto be used for the sole purpose of the repair of athe complex productproduct, so as to restore its original appearance, the repair clause should be placed among the available defences to design right infringement under this Directive. In addition, in order to ensure that consumers are not mislead but are ablethey tocan make an informed decisionchoice between competing products that can be used for the repair, it should also be made explicit inrepair. theThis lawindication thatof the repairmanufacturer’s clauseidentity cannotshall beinclude invokedat byleast the manufacturer or sellername of a component part who have failed to duly inform consumers about the identity ofmanufacturer, the manufacturergeographical address of thehis productregistered toplace beof usedbusiness forand, thewhere purposeappropriate, ofhis repairtelephone ofnumber theor complexe-mail product.address.
Change 8
Removed:The concept of ‘identity of the manufacturer’ is clearer than the concept of ‘origin’ of the product.
Added:Article 19 – paragraph 3: 3. Where at the time of adoption of this Directive the national law of a Member State provides protection for designs within the meaning of paragraph 1, the Member State may, by way of derogation from paragraph 1, continue to provide that protection for designs for which registration has been applied before the entry into force of this Directive. That protection shall last 10 years from the date of entry into force of this Directive, unless that Member State prefers to opt for a shorter period of at least three years.
Removed:Recital 37: (37) In order to improve and facilitate access to design protection and to increase legal certainty and predictability, the procedure for the registration of designs in the Member States should be efficient and transparent and should follow rules equivalent to those applicable to EU designs.
Added:Article 24: The holder of a registered design right may inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter R enclosed within a circle. Such design notice may be accompanied by the registration number of the design or hyperlinked to the entry of the design in the register. Any misuse of this indication may lead to legal proceedings.
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Removed:It being a directive and not a regulation, the term ‘similar’ seems too strong; the term ‘equivalent’, already used in recital 16 of this text, seems preferable.
Added:Article 31 – paragraph 1: 1. Without prejudice to the right of the parties to appeal to the courts, Member States may provide for an efficient and expeditious administrative procedure before their offices for the declaration of invalidity of a registered design right.
Removed:Recital 42: (42) For the purpose of offering efficient means of declaring design rights invalid, Member States should provide for an administrative procedure for declaration of invalidity, which is inspired to the extent appropriate by that applicable to registered EU designs at Union level.
Added:A mandatory administrative system for invalidity would lead to an increase in workload and in public expenditure and investments in the National IP Offices, because (1) conflicts in the field of design are less than in the field of trademark, and putting the system into force would be useless and onerous; and (2) if the rightholder pays the renovation timely, the legal life of a trademark could last forever, while, the legal life of a design is restricted to maximum 25 years -yet designs are often protected from 5 to 10 years-.
Removed:It being a directive and not a regulation, the phrase ‘is aligned to’ seems too strong; the phrase ‘inspired by’ seems preferable.
Removed:Article 6 – paragraph 1: 1. For the purpose of applying Articles 4 and 5, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Union , before the date of filing of the application for registration or, if priority is claimed, the date of priority. A design shall not, however, be deemed to have been made available to the public if it has been only disclosed to a third person under explicit or implicit conditions of confidentiality.
Removed:Linguistic clarification.
Removed:Article 15 – indent 1 a (new): Under the conditions laid down in the first subparagraph, this proposal shall extend to new forms of designs linked to new technologies, including virtual and animated designs, of products which may be in digital form.
Removed:Paragraph 1a includes the requirements formulated by the European Parliament in its resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience.
Removed:Article 19 – paragraph 1: 1. Protection shall not be conferred on a registered design which constitutes a component part of a complex product which is used within the meaning of Article 16(1) for the sole purpose of the repair of that complex product so as to restore its original appearance.
Removed:The wording ‘upon whose appearance the design of the component part is dependent’ is unclear and creates uncertainty as to the scope of the repair clause.
Removed:Article 19 – paragraph 2: 2. Paragraph 1 cannot be invoked by the manufacturer or the seller of a component part of a complex product who have failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the identity of the manufacturer of the product to be used for the sole purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair. This indication of the manufacturer’s identity shall include at least the name of the manufacturer, the address of his registered place of business and his nationality.
Removed:As described, the concept of ‘identity of the manufacturer’ is clearer than the concept of ‘origin’ of the product.
Removed:Article 19 – paragraph 3: 3. Where at the time of adoption of this Directive the national law of a Member State provides protection for designs within the meaning of paragraph 1, the Member State shall, by way of derogation from paragraph 1, continue until …[OP please insert the date = three years from the date of entry into force of this Directive] to provide that protection for designs for which registration has been applied before the entry into force of this Directive.
Removed:The 10-year period appears disproportionate to the stated objective of legal certainty for designs for which registration was sought before the entry into force of this Directive;
Change 9 under “EXPLANATORY STATEMENT”
Changed:The proposed changes are guided by two general objectives: enhancing legal certainty and reiterating positions previously expressed by the European Parliament. The most important concern the replacement of the concept of ‘origin’ of the product, which is too vague, with the concept of ‘identity of the manufacturer’ of the product (Nos 8 and 14), and the replacementrelaxation of the ten-year period for the application of the repair clause to designs for which registration was sought before the entry into force of the new Directive, which was considered excessively long, with a period of three yearsrigid (No 15).