Preamble

Whereas:

(1) A number of amendments are to be made to Directive 98/71/EC of the European Parliament and of the Council (3). In the interests of clarity, that Directive should be recast.

(2) Directive 98/71/EC harmonised key provisions of substantive design law of Member States, which at the time of its adoption were considered to be those most directly affecting the functioning of the internal market by impeding the free movement of goods and the freedom to provide services in the Union.

(3) Design protection in national law of 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 6/2002 (4). The coexistence and balance of design protection systems at Union and national level constitute a cornerstone of the Union’s approach to intellectual property protection.

(4) In line with its Communication of 19 May 2015 entitled ‘Better regulation for better results – An EU agenda’ and its commitment to review Union policies regularly, the Commission carried out an extensive evaluation of the design protection systems in the Union, involving a comprehensive economic and legal assessment, supported by a series of studies.

(5) In its conclusions of 10 November 2020 on intellectual property policy and the revision of the industrial design system in the Union, 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 industrial design systems and to make design protection more attractive for individual designers and businesses, especially small and medium-sized enterprises (SMEs). In particular, that revision was requested to address and consider amendments aimed at supporting and strengthening the complementary relationship between the Union, national and regional design protection systems, and is to involve further efforts to reduce areas of divergence within the design protection system in the Union.

(6) Based on the final results of that 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’ that, following the successful reform of EU’s trade mark legislation, it would revise the Union legislation on design protection with a view to simplifying the system and making it more accessible and efficient, and with a view to updating the regulatory framework in light of developments in relation to new technologies on the market.

(7) In its resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (5), the European Parliament welcomed the Commission’s willingness to modernise the Union legislation on design protection in order to better support the transition to the digital, sustainable and green 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. In that resolution the European Parliament also stated that the EU design protection system should be aligned with the EU trade mark system in order to allow for design holders to prevent design infringing goods from entering the Union customs territory and called on the Commission to make it possible for brand owners to put a stop to design counterfeits transiting through the Union. It also noted that design protection for parts used for the repair of complex products was only partially harmonised and that this was creating fragmentation in the internal market and legal uncertainty.

(8) The consultation and evaluation carried out by the Commission 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, in particular, as a result of the increased accessibility SMEs would have to the design protection system.

(9) In order to ensure a well-functioning internal market, and to facilitate, where appropriate, acquiring, administering and protecting design rights in the Union for the benefit of the growth and the competitiveness of businesses within the Union, in particular SMEs, while taking due account of the interests of consumers, it is necessary to extend the approximation of laws achieved by Directive 98/71/EC to other aspects of substantive design law governing designs protected through registration pursuant to Regulation (EC) No 6/2002.

(10) Furthermore, it is also necessary to approximate procedural rules in order to facilitate acquiring, administering and protecting design rights in the Union. Therefore, certain principal procedural rules in the area of design registration in the Member States and in the EU design system should be aligned. As regards procedures under national law, it is sufficient to lay down general principles, leaving the Member States free to establish more specific rules.

(11) This Directive does not exclude the application to designs of law providing for protection other than that conferred by registration or publication as a design, such as Union law relating to unregistered design rights, or Union or national law relating to trade marks, patents and utility models, unfair competition or civil liability.

(12) It is important to establish the principle of cumulation of protection under specific law for registered designs protection and under copyright law, whereby designs protected by design rights should also be eligible to be protected as copyright works, provided that the requirements of copyright law are met.

(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. To that end, it is necessary to lay down unitary definitions of the notions of design and product, which are clear, transparent, and technologically up-to-date considering also the advent of new designs that are not embodied in physical products. Without the list of relevant products being intended to be exhaustive, it is appropriate to distinguish between products embodied in a physical object, products visualised in a graphic, or products that are apparent from the spatial arrangement of items intended to form an interior or exterior environment. In this context, it should be recognised that animation, such as movement or transition, of the features of a product, can contribute to the appearance of designs, in particular designs that are not embodied in a physical object. Furthermore, there is a need for a unitary definition of the requirements regarding novelty and individual character with which registered design rights should comply.

(14) In order to facilitate the free movement of goods, it is necessary to ensure in principle that registered design rights confer upon the right holder equivalent protection in all Member States.

(15) Protection is conferred upon the right holder, by way of registration of a design, for those design features of a product, in whole or in part, which are shown visibly in an application for registration of such design and made available to the public by way of publication or consultation of the relevant file relating to the application.

(16) Apart from being shown visibly in an application for registration, design features of a product do not need to be visible at any particular time or in any particular situation of use in order to benefit from design protection. As an exception to this principle, protection should not be extended to those component parts which are not visible during normal use of a complex product, or to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements regarding novelty and individual character. Therefore, those design features of component parts of a complex product which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other design features fulfil the requirements for protection.

(17) While an indication of the products should be part of an application for registration of a design, it should not affect the scope of protection of the design as such. Together with the representation of the design, indications of the products can nevertheless serve to determine the nature of the product in which the design is incorporated or to which it is intended to be applied. Furthermore, indications of the products improve the searchability of designs in the register of designs kept by an industrial property office and increase the transparency and accessibility of a register. Therefore, prior to registration, indications of the products need to be accurate, without creating an undue burden on applicants for a registered design.

(18) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design differs from that produced on that user by any other design that forms part of the existing design corpus; this assessment should take into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

(19) 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 needs to have an aesthetic quality. A registered design right could 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.

(20) Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings.

(21) The mechanical fittings of modular products can nevertheless constitute an important element of the innovative characteristics of modular products and represent a major marketing asset, and therefore should be eligible for protection.

(22) A design right should not subsist in a design which is contrary to public policy or to accepted principles of morality. This Directive does not constitute a harmonisation of national concepts of public policy or accepted principles of morality.

(23) It is fundamental for the smooth functioning of the internal market to unify the term of protection afforded by registered design rights.

(24) This Directive is without prejudice to the application of the competition rules under Articles 101 and 102 of the Treaty on the Functioning of the European Union.

(25) For reasons of legal certainty, the substantive grounds for non-registrability and the substantive grounds for the invalidation of registered design rights in all the Member States should be exhaustively enumerated in this Directive.

(26) In order to prevent the improper use of symbols of particular public interest in a Member State, other than those referred to in Article 6ter of the Convention for the Protection of Industrial Property signed in Paris on 20 March 1883 (the ‘Paris Convention’), Member States should however be free to provide for specific grounds for non-registrability. In order to prevent the improper registration and misappropriation of elements belonging to cultural heritage that are of national interest, Member States should also be free to provide for specific grounds for non-registrability and invalidity. Such elements of cultural heritage, considered within the meaning of the Convention Concerning the Protection of the World Cultural and Natural Heritage adopted by the Unesco General Conference on 16 November 1972 or, to the extent they constitute a tangible manifestation of intangible cultural heritage, within the meaning of the Convention for the Safeguarding of the Intangible Cultural Heritage adopted by the Unesco General Conference at its 32nd session on 17 October 2003, include, for example, monuments or a group of buildings, artefacts, handicrafts or costumes.

(27) In view of the growing deployment of 3D printing technologies in different areas of industry, including with the help of artificial intelligence, as well as the resulting challenges for design right holders to effectively prevent illegitimate copying of their protected designs, it is appropriate to provide that the creation, downloading, copying and making available of any medium or software which records the design for the purpose of reproduction of a product that infringes the protected design, constitutes use of the design which should be subject to the right holder’s authorisation.

(28) In order to strengthen design protection and combat counterfeiting more effectively, and in line with international obligations of the Member States under the World Trade Organization (WTO) framework, in particular Article V to the General Agreement on Tariffs and Trade (GATT 1947) on freedom of transit, and, as regards generic medicines, the Doha Declaration on the TRIPS Agreement and Public Health, adopted by the WTO Ministerial Conference on 14 November 2001, the holder of a registered design right should be entitled to prevent third parties from bringing products, in the course of trade, from third countries into the Member State where the design is registered, without being released for free circulation there, where, without right holder’s authorisation, the design is identically incorporated in or applied to such products, or the design cannot be distinguished in its essential aspects from such products.

(29) To that end, it should be permissible for registered design right holders to prevent the entry of infringing products and the placement of such products in all customs situations, including, in particular transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission, also when such products are not intended to be placed on the market of the Member State concerned. In performing customs controls, the customs authorities should make use of the powers and procedures laid down in Regulation (EU) No 608/2013 of the European Parliament and of the Council (6), including at the request of the right holders. In particular, the customs authorities should carry out the relevant controls on the basis of risk analysis criteria.

(30) In order to reconcile the need to ensure the effective enforcement of design rights with the necessity to avoid hampering the free flow of trade in legitimate products, the entitlement of the design right holder should lapse where, during proceedings initiated before the judicial or other authority competent to take a substantive decision on whether the registered design right has been infringed, the declarant or the holder of the products is able to prove that the owner of the registered design right is not entitled to prohibit the placing of the products on the market in the country of final destination.

(31) The exclusive rights conferred by a registered design right should be subject to an appropriate set of limitations. Apart from acts carried out privately and for non-commercial purposes and those carried out 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, critique 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 to be fair as long as it is 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, in particular the freedom of expression.

(32) The purpose of design protection is to grant exclusive rights to the appearance of a product, but not a monopoly over the product as such. Protecting designs for which there is no practical alternative would lead in fact to a product monopoly. Such protection would come close to an abuse of the design protection regime. If third parties are allowed to produce and distribute spare parts, competition is maintained. If design protection is extended to spare parts, such third parties infringe those rights, competition is eliminated and the holder of the design right is de facto given a product monopoly.

(33) 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. The repairability of products is at the core of a sustainable economy, as highlighted in the Commission communication of 11 December 2019 on ‘The European Green Deal’.

(34) It is therefore necessary for the smooth functioning of the internal market and in order to ensure fair competition to approximate the design protection laws of Member States as regards the use of protected designs for the purpose of permitting the 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 form-dependent component parts of complex products only. As the intended effect of that 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 one of the defences provided for under this Directive to design right infringement. In addition, in order to ensure that consumers are not mislead and are able to make an informed decision between competing products that can be used for the repair, it should be explicitly provided for that the repair clause cannot be invoked by a manufacturer or seller of a component part who has failed to duly inform consumers about the commercial origin, and the identity of the manufacturer, of the product to be used for the purpose of the repair of the complex product. That detailed information should be provided through a clear and visible indication on the product or, where that is not possible, on its packaging or in a document accompanying the product, and should include at least the trade mark under which the product is marketed, and the name of the manufacturer.

(35) With a view to preserving the effectiveness of the liberalisation of the spare parts aftermarket sought by this Directive and in line with the case law (7) of the Court of Justice of the European Union, in order to be able to benefit from the repair clause exemption from design protection, the manufacturer or seller of a component part of a complex product is under a duty of diligence to ensure, through appropriate means, in particular contractual means, that downstream users do not intend to use the component parts at issue for purposes other than that of repair so as to restore the original appearance of the complex product. This however should not require the manufacturer or seller of a component part of a complex product to guarantee, objectively and in all circumstances, that the parts they make or sell are, ultimately, actually used by end users for the sole purpose of repair so as to restore the original appearance of that complex product.

(36) In order to avoid divergent conditions in the Member States regarding prior use causing differences in the legal strength of the same design in different Member States, it is appropriate to ensure that any third person who can establish that, before the date of filing of a design application, or, if priority is claimed, before the date of priority, that third person has in good faith commenced use within a Member State, or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered design right, which has not been copied from the latter, is entitled to a limited exploitation of that design.

(37) In order to facilitate the marketing of design-protected products, in particular by SMEs and individual designers, and to increase awareness of the design registration regimes existing both at Union and national level, a commonly accepted notice consisting of the symbol

Image 1
should be available for use by design right holders and others with their consent.

(38) 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 similar to those applicable to EU designs.

(39) It is necessary to lay down essential common rules regarding the requirements and technical means for the representation of designs in any form of visual reproduction at the stage of filing the application for registration, taking into account technical advances in relation to the visualisation of designs and the needs of Union industry in relation to new digital designs. In addition, Member States should establish harmonised standards by means of convergence of practices.

(40) For greater efficiency it is also appropriate to allow applicants for registered designs to combine several designs in one multiple application without being subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class of the International Classification for Industrial Designs (‘Locarno Classification’), established by the Locarno Agreement (1968).

(41) The usual publication following registration of a design could in some cases destroy or jeopardise the success of a commercial operation involving the design. The facility of a deferment of publication affords a solution in such cases. For the sake of coherence and greater legal certainty, thereby helping businesses reduce costs in managing design portfolios, deferment of publication should be subject to the same rules across the Union.

(42) In order to ensure a level playing field for businesses, and provide the same level of access to design protection across the Union by keeping the registration and other procedural burdens for applicants to a minimum, all central industrial property offices of the Member States and the Benelux Office for Intellectual Property should limit, as the European Union Intellectual Property Office (EUIPO) does at Union level, their substantive examination of their own motion to the absence of the grounds for non-registrability exhaustively enumerated in this Directive.

(43) For the purpose of offering another means of declaring design rights invalid, Member States should be allowed to provide for an administrative procedure for the declaration of invalidity which is aligned to the extent appropriate to that applicable to registered EU designs.

(44) It is desirable that Member States’ central industrial property offices and the Benelux Office for Intellectual Property cooperate with each other and with the EUIPO in all fields of design registration and administration in order to promote the convergence of practices and tools, such as the creation and updating of common or connected databases and portals for consultation and search purposes. The Member States should further ensure that their central industrial property offices and the Benelux Office for Intellectual Property cooperate with each other and with the EUIPO in all other areas of their activities which are relevant for the protection of designs in the Union.

(45) Since the objectives of this Directive, namely to foster and create a well-functioning internal market and to facilitate the registration, administration and protection of design rights in the Union to the benefit of growth and competitiveness where appropriate, cannot be sufficiently achieved by the Member States but can rather, by reason of its scale and effects, be better achieved at Union level, the Union may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with the principle of proportionality as set out in that Article, this Directive does not go beyond what is necessary in order to achieve those objectives.

(46) The European Data Protection Supervisor was consulted in accordance with Article 42(1) of Regulation (EU) 2018/1725 of the European Parliament and of the Council (8).

(47) The obligation to transpose this Directive into national law should be confined to those provisions which represent a substantive amendment as compared with Directive 98/71/EC. The obligation to transpose the provisions which are unchanged arises under that earlier Directive.

(48) This Directive should be without prejudice to the obligations of the Member States relating to the time limit for the transposition into national law of the Directive set out in Annex I to this Directive,

HAVE ADOPTED THIS DIRECTIVE: