The European Commission has published its report on the evaluation of EU legislation on design protection (see our recent blog post here). The report is the result of an extensive study, including a consultation in which MARQUES took part.

The report considered both EU protection for registered and unregistered designs, and national systems. Overall, the report found that the legislation works well and is broadly fit for purpose.

Shortcomings identified

However, the report also revealed some shortcomings that need to be addressed to make the legal framework fit to support the transition to a digital and green economy, and to overcome lack of awareness. Some changes are also needed to make the design system more accessible and efficient for industry, SMEs and individual designers.

The shortcomings identified include lack of clarity and robustness regarding subject matter; scope of rights and limitations; outdated or overly complicated procedures; inappropriate fee levels and fee structure; lack of coherence of procedural rules; and an incomplete single market for spare parts.

The report also suggests that the Commission is open to strengthening the position of design right holders regarding 3D printing.

MARQUES comments

MARQUES submitted comments to the public consultation, which was carried out in 2018-2019. The MARQUES Comments, a MARQUES position Paper and a Joint Paper submitted by IP associations in 2018 (on the occasion of the release of the "Legal review on industrial design protection in Europe"), are available on the Position Papers page of the MARQUES website.

Sebastian Fischoeder, Co-Chair of the MARQUES Designs Team, said: "The Commission has recognised the need to get rid of some practically important hurdles such as the same-class requirement for multiple applications and lack of clarity regarding the protection of items such as graphical user interfaces, virtual spaces and other new types of designs." He added: "The Commission also seems open to considering RCD procedural features being made mandatory at national level as well, such as no substantive ex ante examination of novelty or individual character or invalidation proceedings at office level. This is good news."

In its comments, MARQUES addressed the issue of visibility. Sebastian said: "The report suggests that the Commission took note of our warning regarding visibility. Contrary to the conclusion of the Legal Review, we made it very clear that there is no, and should not be, a general visibility requirement. The one exception (component parts of a complex product) should be interpreted restrictively and be limited to heavy machinery. The report remains vague as to whether the Commission leans towards our position."

Sebastian added that two issues seem to be over-rated by the Commission: (1) the relation to other rights, in particular trade marks and copyright, and (2) the spare parts issue.

On the first, he said: "I think the principle of cumulative protection is perfectly ok."

On the second, he said further debate is likely: "We clearly positioned against any further liberalisation. Being aware that our position may be unrealistic, we – as the second-best option – advocated for a narrow defence to enable must-match repairs under strict conditions. We also see a need to look more closely to the economic and market implications on the basis of actual data, also taking into account international competition to European design industry. This is a point where we will have to push our position."

More information about design protection in the EU is available on the dedicated page on the Commission's website.

This article was included in the November 2020 issue of the HouseMARQUES newsletter. Read the rest of the issue here.