Industrial Design protection in Europe – Directive and Community Design Annette Kur. MPI Munich Summary: Like in the field of trademarks, legislation on industrial designs has been enacted in the EU on two levels: Member States have been obliged to harmonize national rules on industrial design protection on the basis of a Design Directive (98/71/EC), and in addition, a unitary regime for design protection was established on the Community level by the Community Design Regulation (EC) No 6/2002 of 12 December 2001, which entered into force on 6 March 2002. The presentation explains the background and meaning of important substantive provisions (Definitions, requirements for protection, scope of protection etc.), which are the same in the Directive as well as the Regulation, and gives some additional information on the specifics of the Community design system, in particular the unregistered Community design. Part 1: The Design Directive, 98/71/EC of 13 October 1998, O.J. L 289, 28/10/1998 P 28 35 1. General remarks: The Directive should have been implemented by October 21, 2001, but most states have failed to meet that deadline (except for France, Italy and Denmark). Until May 2003, implementation was completed in all Member countries except Germany, Spain and Austria, the legislative process being quite advanced in Germany and Spain. Please note that the substantive provisions are the same in the Design Directive and the Community Design Regulation. The comments made on individual provisions in the Design Directive are therefore also valid with respect to the Community Design Regulation, which will only be considered briefly under part 2. 2. Contents (Text + some comments) Art. 1 – Definitions For the purposes of this Directive: (a) ‘design‘ means the appearance of a whole or a part of a product resulting from the features of, in particular, the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation; (b) ‘product‘ means any industrial or handicraft item. including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs; (c) ‘complex product‘ means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product. Comments: 1. Notion of a design Before harmonisation, different notions prevailed in Europe regarding the object of protection of industrial design legislation. In the majority of countries, it was considered as an essential requirement that a design is applied to an article, and accordingly, the scope of protection 1 conferred by the design was usually confined to articles of the same kind. In other countries, e.g. in Germany, the form ‘as such’ was held to constitute the object of protection. This could make a difference e.g. in a case when the same design was applied to a different kind of articles, and it also had an impact on the protectability of graphic design, e.g. emblems printed on a sheet of paper, or icons appearing on a computer screen. The matter was not thoroughly discussed during the elaboration of the Directive and Regulation, and there is little guidance to be found on the issue in the legal texts and materials. However, the majority view appears to be that the abstract notion of e.g. former German law has been abandoned in favour of a more concrete, product-oriented approach, as is reflected in the interplay between Art. 1, paragraphs (a) and (b). On the other hand, the definition under (b) of what may constitute a product in the meaning of European design legislation is very broad, comprising also graphic symbols and typographic typefaces. Inter alia, this means that contrary to the previous situation e.g. in the UK, emblems and icons are no longer excluded from design protection (on icons and other GUI elements see also infra). 2. Protection for parts According to Art. 1 (b), parts of complex products (as defined under (c)) also qualify as products under the Design Directive. This requires another change in previous law and/or practice in several Member States, where such protection was not available under the old legislation. The fact that parts cannot be excluded from protection does however not mean that Member States are obliged to grant spare parts full protection against manufacture and use for repair purposes; see on this point infra, Art. 14. Furthermore, in order to obtain protection, parts of complex products must fulfil certain requirements which are mentioned in Art. 3 (see infra). To be distinguished from the protection granted to parts of complex products is the possibility that design protection relates only to certain parts of the appearance of a product (cf. Art. 1 (a) :…. the appearance of a whole or a part of a product). This option corresponds to the legal situation in the US and in Japan, where the fact that the protected design shall only consist in a part of a given product can be marked in the application by using dotted lines. The use of such lines or corresponding techniques is however unusual in European design practice until now, and it can hardly be recommended for the future. This is owed to the fact that dotted lines etc. are primarily of interest in the framework of substantive examination, which is not carried out in Europe on the national (as well as on the Community) level. 3. In particular: protection for computer icons and other GUI elements It was mentioned before (sub 1.) that in consequence of the fact that graphic symbols as well as typographic typefaces qualify as “products” in their own right according to Art. 1 (b), there is no ground any longer for excluding badges and emblems etc. from design protection. With respect to computer icons and other GUI (=graphical user interface) elements, there is however a slight problem resulting from the fact that pursuant to the last half-sentence in Art. 1 (b), computer programs do not figure as products in the meaning of the directive. This might lead to the conclusion that GUI elements, being (part of) the visual appearance of a computer program on the screen, do not fall under the definition of a “design”, as is set out in Art. 1 (a). However, this result would hardly make sense from a legal and economic point of view, and it would not be in line with the legislative intent underlying the provision. As is stated in the explanatory memorandum to the first proposal of the Community Design Regulation (1993), the reason for inserting the exclusion clause with respect to computer programs was to avoid 2 interference with the European directive on computer programs, which might ensue if it were possible on the basis of design protection for the ‘look and feel’ elements to claim protection for the computer program generating them. This is however no realistic option anyway with respect to icons. This view is confirmed by the fact that it is expressly declared in the same explanatory memorandum that the “protection for specific graphic designs as applied for example to icons and menus” shall not be excluded. Art. 2 – Scope of application 1. This Directive shall apply to: (a) design rights registered with the central industrial property offices of the Member States; (b) design rights registered at the Benelux Design Office; (c) design rights registered under international arrangements which have effect in a Member State; (d) applications for design rights referred to under (a), (b) and (c). 2. For the purpose of this Directive, design registration shall also comprise the publication following filing of the design with the industrial property office of a Member State in which such publication has the effect of bringing a design right into existence. (no comments) Art. 3 - Protection Requirements 1. Member States shall protect designs by registration, and shall confer exclusive rights . upon their holders in accordance with the provisions of this Directive 2. A design shall be protected by a design right to the extent that it is new and has individual character. 3. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and have individual character: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. 4. ‘Normal use‘ within the meaning of paragraph (3) (a) shall mean use by the end user, excluding maintenance, servicing or repair work. Art. 4 – Novelty A design shall be considered new if no identical design has been made available to the public before the date of filing the application for registration or, if priority is claimed, the date of filing of priority. Designs shall be deemed to be identical if their features differ only in immaterial details . Art. 5 - Individual Character 1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by 3 any design which has been made available to the public before the date of filing the application for registration or, if priority is claimed, before the priority date. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration. Art. 6 – Disclosure 1. For the purposes 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 Community, before the date of filing of the application for registration or, if priority is claimed, the date of priority. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality. 2. A disclosure shall not be taken into consideration for the purpose of applying Articles 4 and 5 if a design for which protection is claimed under a registered design right of a Member State has been made available to the public: (a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title, and (b) during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority. 3. Paragraph 2 shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title. Comments on Art. 3 – 6 1. Overview Arts. 3, 4, 5 and 6 must be read together in order to obtain a comprehensive picture of the requirements for protection under the Design Directive. Art. 3 states the principle that protection requires novelty and individual character, and sets out specific requirements for parts of complex products. In Art. 4 and 5 respectively, novelty and individual character are defined. Both definitions are complemented by Art. 6, where the concept of a design having been “made available to the public” is laid down. Most important in that context is Art. 6 (1), limiting to some extent the “prior art” to be taken into account for the purpose of assessing novelty and individual character to what could possibly be known to European professional circles. 2. Specific requirements for protection of (spare) parts (cf. Art. 3) Apart from the fact that Art. 3 obliges Member States to grant protection upon registration of designs that fulfil the general requirements, the most remarkable aspect of that provision is that it stipulates specific requirements for protection of parts. The first of these requirements – that each part must meet the requirements for protection in itself, paragraph 3 (a) – amounts to hardly more than a restatement of the evident. However, its insertion was deemed necessary because it was feared that on the basis of certain national case law (Germany) or legal concepts (France), it would be considered possible to claim automatic protection for each part 4 of a complex product simply because the product as a whole was novel and had individual character. The second requirement – that the spare part can only be protected to the extent it remains visible during normal use of the complex product, paragraph 3 (b) – is more important and controversial. Its insertion was a result of the spare parts debate, when it was realised by the European Parliament that at least in theory, each part under the hood of a car could be covered by an exclusive design right, as protection is granted independently of the question as to whether the design has, or is intended to have, an ‘eye appeal’. The exclusion of non-visible features of parts from design protection has been criticized in the literature as deviating from the overall concept underlying the directive. However, it must be admitted that the clause makes sense in practice in so far as it solves the notorious spare parts controversy at least to a certain extent. 3. Novelty (cf. Art. 4, 6(1)) There has been some arguing in the literature about the feasibility or even legitimacy of having novelty and individual character as cumulative criteria for design protection. Although it must be conceded that to apply two instead of only one requirement clashes with the deliberately chosen wording of Art. 25 of the TRIPS agreement (“novelty or originality”), it must hardly be feared that this will have meaningful and detrimental effects in practice. Even if only one requirement is applied, the assessment usually proceeds in two logical steps, testing first whether exactly the same configuration has existed before, and, having denied that, assessing whether the difference vis-à-vis the pre-existing wealth of forms is such that the design actually merits protection. To distinguish expressly between both steps – calling the first one “novelty” and the second “individual character” – therefore amounts to a clarification rather than to imposing additional barriers against protection, which would otherwise be granted more easily. For the assessment of novelty and individual character alike, the design has to be compared with all other designs which have been made available to the public before the relevant date, (i.e. the date of application or first disclosure or of priority claimed). Whereas Art. 4 does not contain any restrictions of the novelty concept, it is stipulated in Art. 6 first paragraph that publication following registration or use in the course of trade is not taken into account for the assessment of novelty (and individual character) “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 Community”. This clause is the outcome of a rather heated debate between the protagonists of an absolute concept of novelty and a more restrictive (protective) approach. In the first, preliminary drafts of the design directive and regulation, the approach had been clearly Eurocentric, with the actual or presumed knowledge of European professional circles setting the decisive standard for the assessment of novelty and individual character. After harsh criticism, this was changed into absolute novelty (with certain restrictions applying to the assessment of individual character). This again provoked protest, in particular from the textile industry, which claimed that it would be far too easy for infringers to submit fake evidence as to the fact that the design had been seen before, e.g. on a village market in a far-away country. This led to another change of the novelty concept, as is reflected in the present text: Whereas Art. 4 still departs from absolute novelty, Art. 6 (1) shall make it clear that novelty cannot be destroyed by divulgations which could not possibly have come to the attention of interested circles in Europe (e.g. the above-mentioned display on a village market in Xxxstan). This means that the original objective of the restriction inserted in 5 Art. 6 (1) was mainly to prevent abuse, and not to re-impose the Eurocentric view. If this is accepted as the relevant point of departure, it follows that the interpretation of Art. 6 (1) should be very narrow. It is further important to note in this context that in contrast to the initial approach towards novelty (and individual character), it is the right holder who bears the burden of establishing that the divulgation could not have become known in Europe, whereas according to the original, Eurocentric approach, it would have been for the person contesting novelty to establish that the divulgation was such that it should have been noticed in the EU. 4. Individual character (cf. Art. 5) The second requirement for protection was named “individual character”, thereby marking the differences between the design concept and the standards used in copyright (originality) or trademark law (distinctiveness). It is not necessary that the design should bear the stamp of the designer’s personality, as in copyright, nor does it have to convey a message about commercial origin, as in trademark law. Also, “individual character” is not a quality requirement in the sense that the design must be particularly appealing to the eye, or that it must surpass the skills of an average designer, etc. In essence, it only requires that the design differs to some extent from the pre-existing wealth of forms. The assessment of individual character has to be undertaken from the perspective of an “informed user”. Just as with the term “individual character”, it may help to obtain a better understanding if it is pointed out first what this does not mean: The assessment shall not depart from the point of view of an expert in the field of industrial designs, nor shall the actual perception of the public at large be decisive – the nightmare of public polls having to be conducted in order to solve design infringement matters should definitely be excluded. Instead, the deciding judge should place him- or herself in the shoes of an average member of the public interested in buying or using the article in question. There should however also be room for taking into account advice given by design experts on the relevance of details which are not easily detected by the uneducated eye – this why the relevant wording refers to an “informed user” instead of simply to a “user”. The most important question when assessing individual character concerns the threshold to be surpasses in order to claim protection. Will protection already be granted for minimal, incremental changes or only for design achievements substantially distinguishing themselves from the previously existing design corpus? There is no easy answer to this – only time will show, and it will ultimately be for the ECJ to solve the question. The legal Acts – Directive as well as Regulation – do not offer much guidance in this respect. It is remarkable however that no qualifying criteria are mentioned in Art. 5 of the Directive, whereas it is stated in the recitals (no. 13) that in order to obtain protection, a design must “clearly differ” from the overall impression produced on the informed user by the existing design corpus. It is unclear whether this merely reveals a lack of coordination between the text and the recitals, or whether this is a deliberately dualistic approach that expresses a compromise achieved in the preceding discussions on the future level of the design protection threshold. Whatever the outcome will be in general, it should be incontestable on the basis of Art. 5 (2) that even small differences can suffice for obtaining design protection in product sectors where technical and factual constraints as well as a high density of existing forms leave only little freedom for designers to achieve something new. As a necessary corollary to this rule, Art. 9 stipulates that the same aspects must be taken into account for the assessment of the scope of protection granted, which in such a situation can also just be minimal. 6 5. “Grace period” (cf. Art. 6 (2), (3)) As was pointed out supra, Art. 6 contains a detailed regulation of the conditions for, and consequences of, a design having been “made available to the public”. Comments have already been made on the manner in which the concept of divulgation is restricted in order to leave out of account publications and public use which have taken place under circumstances which could not have become known to professional circles in Europe. In addition to that, Art. 6 stipulates that the making available of a design to the public is not detrimental to novelty or individual character if the publication has been made by the designer or his successor in title, or is the consequence of an abuse, and if an application for registration is filed within twelve months of the date of publication. Thus, European design legislation grants a sort of one year “grace period” for industrial designs. The meaning is that this should give designers an opportunity of testing the market potential of their designs – in particular: of mass designs like textiles etc. – under realistic conditions before finally deciding whether it is worth-while to register or not. Art. 7 – Designs dictated by their technical functions and designs of interconnections 1. 2. 3. A design shall not subsist in features of appearance of a product which are solely dictated by its technical function. A design shall not subsist in features of appearances of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed around or against another product so that either product may perform its function. Notwithstanding paragraph 2, a design right shall, under the conditions set out in Articles 4 and 5, subsist in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system. Comments: Art. 7 (1) incorporates the general rule according to which designs shall not be protected if and to the extent that there is no “design alternative” for achieving the same technical effect. The purpose of this rule is to ensure that exclusive rights should be granted for such forms only under the condition that they meet the specific requirements of patent or utility model protection. There seems to be wide agreement that Art. 7 (1) should be interpreted in a narrower sense narrower than the corresponding exclusion clause applying used in European trademark law (Art. 3 (1) (e) of Directive 104/89 EEC), the application of which, according to the ECJ’s decision in Remington/Philishave, has to be assessed independently from the existence of technical alternatives. The reason for the different treatment can be found in the fact that to grant trademark protection for product designs which are determined by their technical function would lead to potentially eternal protection, whereas the differences in the term of protection between the legal regimes for design protection on one hand and utility model/patent protection on the other are far less pronounced. In the second paragraph, Art. 7 excludes protection for so-called “must-fit” features, i.e. elements and interfaces which are technically necessary in order to connect one part of a complex product with the rest. Whereas this rule, being a logical consequence of the principle set out in the first paragraph, by now is generally accepted, its practical relevance for the 7 spare parts sector is clearly inferior to the contested issues concerning the “must match” features of spare parts, for which a commonly acceptable solution has not been found as yet. Art. 7 (3) contains an exemption from the must-fit exemption with respect to modular products. This rule has become known as the “Lego-exemption”. It has even been suggested that it goes back to the fact that the person in the Commission who was mainly in charge of elaborating the proposal for the Design Directive came from Denmark. However, the exemption made for modular products has better reasons than such national loyalties. Whereas the permission to reproduce must-fit elements normally only gives access to markets for spare parts and accessories while reserving the market for the main product to the designer, this separation cannot be made in case of modular products, the raison d’être of which is to be interconnected: If the interface could be copied freely, third parties were put in a position to capture the entire market. It is the objective of Art. 7 (3) to prevent this from happening, if the interconnecting elements are such that they meet the normal requirements for design protection. Art. 8 – Designs contrary to public policy or morality A design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality. (no comments) Art. 9 – Scope of protection 1. 2. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. Comments: Art. 9 establishes the principle that protection for registered designs is objective, i.e. it is not required to establish copying. For countries previously following a copyright approach towards design protection, like Germany and France, this amounts to a change of paradigm. It remains to be seen what the impacts will be in practice. In its contents, Art. 9 mirrors the requirements for protection which are set out in Art. 5, the provision defining individual character. The relevant notions, in particular the concept of the “informed user”, are therefore the same in both provisions. Although this is not expressly mentioned anywhere in the legal texts, it appears vital for an optimal balance of design protection that the conditions for the acquisition of protection and the scope of protection granted remain to be mutually reflexive in the sense that (only) design having a strong individual character confers strong protection, whereas design which is only slightly different from the pre-existing wealth of forms, although not necessarily being excluded from protection, is only granted a very narrow scope. An expression of this principle can be seen in Art. 9 (2) and its counterpart in Art. 5 (2) (see on this point already supra). Art. 10 – Term of protection 8 Upon registration, a design which meets the requirements of Article 3(2) shall be protected by a design right for one or more periods of five years from the date of filing of the application. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing. (no comments) Art. 11 – Invalidity or refusal of registration 1. A design shall be refused registration, or, if the design has been registered, the design right shall be declared invalid: (a) if the design is not a design within the meaning of Article 1(a); or (b) if it does not fulfil the requirements of Articles 3 to 8; or (c) if the applicant for or the holder of the design right is not entitled to it under the law of the Member State concerned; or (d) if the design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority, and which is protected from a date prior to the said date by a registered Community design or an application for a registered Community design or by a design right of the Member State concerned, or by an application for such a right. 2. Any Member State may provide that a design shall be refused registration, or, if the design has been registered, that the design right shall be declared invalid: (a) if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State concerned governing that sign confers on the right holder of the sign the right to prohibit such use; or (b) if the design constitutes an unauthorised use of a work protected under the copyright law of the Member State concerned; or (c) if the design constitutes an improper use of any of the items listed in Article 6b of the Paris Convention for the Protection of Industrial Property, or of badges, emblems and escutcheons other than those covered by Article 6b of the said Convention which are of particular public interest in the Member State concerned. 3. The ground provided for in paragraph 1(c) may be invoked solely by the person who is entitled to the design right under the law of the Member State concerned. 4. The grounds provided for in paragraph 1(d) and in paragraph 2(a) and (b) may be invoked solely by the applicant for or the holder of the conflicting right. 5. The ground provided for in paragraph 2(c) may be invoked solely by the person or entity concerned by the use. 6. Paragraphs 4 and 5 shall be without prejudice to the freedom of Member States to provide that the grounds provided for in paragraphs 1(d) and 2(c) may also be invoked by the appropriate authority of the Member State in question on its own initiative. 7. When a design has been refused registration or a design right has been declared invalid pursuant to paragraph 1(b) or to paragraph 2, the design may be registered or the design right maintained in an amended form, if in that form it complies with the requirements for protection and the identity of the design is retained. Registration or maintenance in an amended form may include registration accompanied by a partial disclaimer by the holder of the design right or entry in the design Register of a court decision declaring the partial invalidity of the design right. 8. Any Member State may provide that, by way of derogation from paragraphs 1 to 7, the grounds for refusal of registration or for invalidation in force in that State prior to the date on which the provisions necessary to comply with this Directive enter into force shall apply to 9 design applications which have been made prior to that date and to resulting registrations. 9. A design right may be declared invalid even after it has lapsed or has been surrendered. (no comments) Art. 12 – Rights conferred by the design right 1. The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. 2. Where, under the law of a Member State, acts referred to in paragraph 1 could not be prevented before the date on which the provisions necessary to comply with this Directive entered into force, the rights conferred by the design right may not be invoked to prevent continuation of such acts by any person who had begun such acts prior to that date. (no comments) Art. 13 – Limitation of the rights conferred by the design right 1. The rights conferred by a design right upon registration shall not be exercised in respect of: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; (c) acts of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source. 2. In addition, the rights conferred by a design right upon registration shall not be exercised in respect of: (a) the equipment on ships and aircraft registered in another country when these temporarily enter the territory of the Member State concerned; (b) the importation in the Member State concerned of spare parts and accessories for the purpose of repairing such craft; (c) the execution of repairs on such craft. (no comments) Art. 14 – Transitional provision Until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18, Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the repair of a complex product so as to restore its original appearance and shall introduce changes in those provisions only if the purpose is to liberalise the market for such parts. Comments: Art. 14 – generally known as the “freeze plus” or “standstill plus” clause – is the compromise found in order to end the deadlock between the producers of complex products (in particular 10 automobiles) and independent producers of spare parts concerning the introduction of a permission, generally or under certain conditions, to reproduce and market so-called mustmatch parts for the purpose of repair (repair clause). Car manufacturers endorse the position that a repair clause would amount to an intolerable encroachment on their vested rights, while the spare parts lobby argues that the grant and exercise of exclusive rights for spare parts, if covering the repair situation, would create a genuine product monopoly, and would therefore be irreconcilable with the true and legitimate function of industrial design protection. When it became apparent that no chance existed for the time being to reconcile the antagonistic positions, it was decided that the directive should enter into force in its uncontroversial parts, with a guarantee given to the spare parts manufacturers that the present legal conditions remain in force, unless Member States decide to change their laws with a view to grant more liberal conditions for the marketing of such parts. At the same time, the Commission was endowed with the task to elaborate, within three years after the date set for the implementation of the directive, a proposal on which a commonly acceptable solution for spare parts protection might be founded (see Art. 18 of the Directive). At present, the situation in the EU Member countries is as follows: The UK, Ireland, the Benelux countries and Italy have enacted legislation providing for a repair clause; in Spain, legislation implementing the directive and containing a repair clause is pending at present before Parliament. Greece has enacted legislation in the design field before the directive went into force; the act contains a clause permitting the “reproduction of parts of motor-driven vehicles” for repair purposes, but only after expiry of a five-year period of full protection and against payment of reasonable remuneration. In Denmark, Sweden, Finland, France and Portugal, no specific rules have been introduced with respect to spare parts. Denmark and Sweden have been notified to the Commission by the spare parts industry, who argues that the wording of the new provisions indicates a lowering of the threshold for protection, thus violating Art.14 by creating less liberal conditions for the marketing of spare parts. In order to avoid such problems, the new German Design Act (presently pending) stipulates that the old legislation remains unchanged with respect to spare parts until a harmonized solution will be found. Art. 15 - Exhaustion of rights The rights conferred by a design right upon registration shall not extend to acts relating to a product in which a design included within the scope of protection of the design right is incorporated or to which it is applied, when the product has been put on the market in the Community by the holder of the design right or with his consent. (no comments) Art. 16 - Relationship to other forms of protection The provisions of this Directive shall be without prejudice to any provisions of Community law or of the law of the Member State concerned relating to unregistered design rights, trademarks or other distinctive signs, patents or utility models, typefaces, civil liability or unfair competition. Art. 17 – Relationship to copyright 11 A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which such a protection is conferred, including the level of originality required, shall be determined by each Member State. Comments to Arts. 16 and 17 As protection for the appearance of useful articles lies at the crossroads of many different legal regimes, it is particularly important to know whether and to which extent the various modes of protection are mutually exclusive or not. With the exemption of protection for (the appearance of) computer programs, which is only of theoretical relevance anyway (see supra), the design directive has opted for unrestricted cumulation in the sense that protection under design legislation shall not preclude protection under any other legal regime. This rule is particularly important with respect to copyright, given the fact that some Member States have formerly adhered to a rule excluding or curtailing copyright protection for items which are or could be protected as industrial designs. By virtue of Art. 17, such (partly) exclusive regimes are declared unacceptable. However, the directive does not interfere with the freedom of the national legislature or judiciary apply a rather high threshold for copyright protection of works of applied art, although in practice, the impact of rather demanding standards may come close to the effects of exclusive regimes. Art. 18-21 – Miscellaneous (Revision with respect to repair clause, implementation, entry into force, addressees). 12 Part 2: The Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs) 1. General remarks The Community Design Regulation was published in O.J. L 3/1 of 5 January 2002 and has entered into force on 6 March 2002. The registration of Community designs is administered by OHIM. Applications were accepted since 1st January 2003 and have been processed since 1st April 2003. Applications are only examined with respect to formalities; i.e. the office does not carry out any formal examination. Like the Community trademark, the Community design is a unitary right which is valid throughout the whole Community. As a corollary, the existence of (a) prior right(s) results in nullity of the entire Community design, even if the prior right at stake is only valid in one Member State. Detailed information concerning the practical aspects of the Community design system is available at the OHIM’s website, www.oami.eu.int. 2. Contents (overview) a) The substantive provisions (prerequisites and scope of protection) are the same in the Regulation and in the Directive; see in that respect the comments made in part 1on individual provisions. In addition to the Directive, the Regulation contains provisions on prior user’s rights (Art. 22) and on deferment of publication (Art. 50: publication may be deferred for 30 months). In order to avoid unfair results while publication is deferred, protection of registered designs during that time is reduced to protection against copying. b) As an extra feature, the Community Design Regulation introduces the unregistered Community design right (UCD). Protection is granted for designs meeting the general requirements for protection without registration for 3 years after having been “made available on the market“ (Art. 11), and it is effective against copying only. It is unclear from the text of Art. 11 whether protection as unregistered Community design is only available to designs which have been made public in the EU. The problem was allegedly solved by the Art. 110a (5), which was added to the Community Design Regulation by the treaty concerning the enlargement of the Community. The provision reads: Paragraphs 1, 3 and 4 above shall also apply to unregistered Community designs. Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design. c) Because of the spare parts dilemma described in the first part, the Community Design had to exclude protection for spare parts to the extent they are used for repair purposes (see Art. 100). Otherwise, the freedom granted in the directive to national legislatures to adapt different solutions might have been undermined. The provision reads: 13 1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance. 2. The proposal from the Commission referred to in paragraph 1 shall be submitted together with, and take into consideration, any changes which the Commission shall propose on the same subject pursuant to Article 18 of Directive 98/71/EC. d) The provisions on sanctions and procedures in the Community Design Regulation are closely modelled on those in the Community Trademark Regulation. Proceedings concerning infringement and declaration of (in)validity are handled by national courts having been designated by their government as Community design courts. The catalogue of sanctions is incomplete. In matters not covered by the Regulation, Community design courts have to apply national law, including their own rules of private international law. A. Kur, May 2003 14