EU Directive and Regulation Update: Enhancing Design Protection

28 Jan EU Directive and Regulation Update: Enhancing Design Protection

Posted at 09:26h in Articles, Featured News, Industrial designs, News, Patents and utility models by

At the end of last year 2024, the European Union approved a recast Directive 2024/2823 on the legal protection of designs (1) and a revised EU Regulation 2024/2822 on European Union (2) , thus amending the previous Council Regulation (EC) No 6/2002 on Community designs.

The new regulation, effective from May 1, 2025 (except for certain provisions which will not apply until 1 July 2026), brings significant changes aimed at modernizing and simplifying the design protection system across the EU.

Modernization of Design Protection

The regulation updates the terminology of the design protection in Europe, replacing the “Community design” by the “European Union design”. The aim with this change has been to reflect the evolving nature of the EU and to ensure consistency across legal documents.

Broader Definition of Products

One of the most notable changes is the broader definition of products. The regulation now includes designs not embodied in physical products, such as graphic works and animations. The definitions in Article 3 have been amended to:

(1) “design” means the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features;
(2) “product” means any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including:

(a) packaging, sets of articles, spatial arrangements of items intended to form an interior or exterior environment, and parts intended to be assembled into a complex product;
(b) graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces;

With this changes, the regulation aims to make it clear that products in the “digital world” can also benefit from protection from an EU Design.

Enhanced Legal Certainty: Object of protection and Grounds for invalidity updated

The regulation clarifies now that “protection shall be conferred for those features of the appearance of a registered EU design which are shown visibly in the application for registration” (new Article 18a). The regulation now makes it clear that “apart from being shown visibly in an application for registration of an EU design, 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”.

This enhancement aims to (hopefully) provide greater legal certainty for designers by making it clear that there is no requirement of visibility, an issue that had been controversial and object a debate until now.

The regulation provides that an exception to that principle should apply “to the design protection of component parts of a complex product that need to remain visible during normal use of that product”.

The regulation has also updated the grounds to seek invalidity of an EU design (Article 25 amended) by specifying which prior designs prevail when conflict arises. Namely, the regulation now refers to prior designs made available to the public by previous EU designs, National designs, and International Designs with effect in the EU, or by application for such designs.

Adaptation to New Technologies

In the same direction and addressing the challenges posed by emerging technologies, the regulation includes now provisions (Article 19 as amended) to protect designs against illegitimate copying through new technologies like 3D printing and artificial intelligence and against its distribution through digital channels.

Article 19 as amended now prohibits:

(d)  creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product referred to in point (a) [i.e. a product in which the design is incorporated or to which the design is applied] to be made.

The regulation now clearly considers these practices as “use of the design which should be subject to the right holder’s authorisation”. This adaptation ensures that the design protection system remains robust and effective in the face of the most recent technological advancements related to the manufacturing and distribution of goods.

 Repair clause: a major addition to balance the market.

 A new article has been included in the regulation specifically limiting the scope of protection of an EU design for “a component part of a complex product upon whose appearance the design of the component part is dependent, […] for the sole purpose of the repair of that complex product so as to restore its original appearance”.

The regulation aims to harmonises the laws of Member States as regards the use of protected designs for the purpose of permitting the repair of a complex product by making this clause a permanent clause that all EU members states will have to adopt (up to now only certain countries, such as Spain, had it in their national law).

With an effort to balance the rights of the manufacturers and the consumers, the regulation now also include the obligation “to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, 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, so that they can make an informed choice between competing products that can be used for the repair”. Manufacturer or the seller of a component part of a complex product who failed to so will not be able to benefit from the repair exemption.

Ⓓ – A symbol for greater awareness of registered designs

 The regulation now provides a specific provision (Article 26a) for owners of EU designs to be able to indicate that their designs are registered using the symbol Ⓓ, as analogy symbol as the well-known ® for registered trademarks.

The end of the “one class to rule them all”

Before this new regulation, while filing an application for the registration of multiple designs was possible, this was only available for designs contained in the same class of the International Classification for Industrial Designs (‘Locarno Classification’) established by the Locarno Agreement (1968), which standardises how products subject to design protection are classified.

The new regulation now allows applicants to combine multiple designs in one multiple application (Article 37 amended) without the designs having to belong to the same Locarno class.. However, the number of designs contained in a multiple application has been reduced to a maximum of 50. These are great news due to the substantially lower costs of multiple design application.

Simplified Procedures

The new regulation introduces simplified procedures for design registration, making it easier for designers to navigate the system. Several articles have been amended to do so. This simplification is expected to reduce the administrative burden on SMEs and individual designers, allowing them to focus more on their creative work.

Simpler Fee Schedule and (Some) Cost Reduction

In addition to simplifying procedures, the regulation also aims to simplify the fee schedule and reduce the costs associated with design registration. The rational is that lower costs will make design protection more accessible to a wider range of designers, particularly those with limited financial resources.

For example, the fee schedule is now set and included in the regulation (Annex I).

Also, the old “application fee” and “publication fee” have been merged into a new single fee (a single application fee for a single design, and a single additional application fee in respect of each additional design in the case of multiple designs applications).

Regarding costs, while for a single design costs are maintained (350 EUR), the cost for up to 10 designs using a multiple application is lower with the new regulation as the new additional application fee in respect of each additional design included in a multiple application (125 EUR) is lower than the previous additional application and publication fees combined (115 EUR + 60 EUR). For 10 designs, this corresponds to a very noticeable reduction of almost 25% in fees.

For more than 10 designs, this change results in a substantial fee increase as the previous application and publication fees (50 EUR + 30 EUR), which were very low, will not apply anymore.

However, with the new scheme, this cost increase will only be noticeable for multiple applications over 20 designs.

On the downside for owners, the new regulation includes a substantial increase of the renewal costs for registered designs. Renewal fees have been increased, with fees being more than doubled on average for years 5 to 20 after registration and almost quadrupled for the last period comprising years 21 to 25 after registration.

While on the plus side, this will limit the maintenance of designs which are not being commercially exploited, with the new regulation owners will have to regularly check their portfolio to ensure that only meaningful registered designs that bring value to their business are kept as to avoid unnecessary costs.

Future Outlook

Overall, the introduction of Regulation (EU) 2024/2822 marks a significant step forward in the EU’s efforts to modernize and enhance its design protection system.

By addressing the needs of contemporary designers and adapting to new technologies, the regulation aims to create a more robust and effective framework for protecting designs in the coming years.

As the regulation comes into force on May 1, 2025, designers and businesses across the EU will need to familiarize themselves with the new provisions and take advantage of the opportunities they offer.

At CURELL SUÑOL we look forward to helping you to do so, as we strongly believe that design protection is a very powerful (and often unknown) tool to increase the value of your designs and products.

Our team will be glad to assist you and walk together with you the steps to ensure your creativity is protected under the new system!

Author: Ricard Valdés-Bango Curell

Photo by Markus Spiske on Unsplash