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
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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
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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
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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
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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
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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.
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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
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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
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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
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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
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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).
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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:
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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
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