The EU Design Reform Package: Modernising Intellectual Property for the 21st century

Background

On November 18, 2024 the European Union published the long awaited Design Reform Package in its Official Journal. The package consists of a new Regulation (EU) 2024/2822 on the EU Design (formerly known as Community designs) and of a new Directive (EU) 2024/2823 setting minimum standards for national design laws across all 27 EU Member States.

This long-awaited update introduces significant changes to the design protection framework on EU level and in the EU member states. The new EU Design Regulation will apply from 1 May 2025. However, the articles which require the implementation of secondary legislation will only apply from 1 July 2026. The new EU Design Directive will enter into force on 9 December 2024. The EU Member States are required to transpose the Directive into their national law before 9 December 2027.

Key elements of the reform

1. New names, definitions, new symbol (from 1 May 2025)

The formerly known Registered Community Design (RCD) and Unregistered Community Design (UCD) will be replaced with Registered European Union Design (REUD) and Unregistered European Union Design (UEUD).

In addition to the old definition of a “design”, namely “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” the new law provides further “the movement, transition or any other sort of animation of those features”. So far, the EUIPO has already allowed digital designs, by filing up to 7 static views that show an animated design at different specific moments in time, for instance, to protect graphical user interfaces. Given one of the aims of the reform is to simplify the requirements to represent designs, it can be expected that the secondary legislation will allow the filing of JPEGs and MP4s for motion designs from 1 July 2026, in line with the equivalent provisions for motion trade marks at the EUIPO.

The “product” definition (“any industrial or handicraft item other than computer programs”) has been supplemented with the following wording, “regardless of whether it is embodied in a physical object or materialises in a non-physical form”, so virtual goods will also qualify for design protection.

The new Regulation provides in Article 26a that the holder of a registered EU design may inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter D enclosed within a circle Ⓓ. Such design notice may be accompanied by the registration number of the design or hyperlinked to the entry of the design in the register.

2. Multiple designs for different product categories (from 1 May 2025)

Under the old Regulation the filing of multiple designs in one application was only possible if the designs fell under the same Locarno Class. Under the new Regulation up to 50 designs can be filed in one multiple application irrespective of falling under the same Locarno Class.

3. Cost Reduction (from 1 May 2025)

The fee for one EU Design application remains the same, namely at €350 but this will no longer be split up into application fee (€230) and publication fee (€120). However, the fees for each further design in a multiple application are reduced from €175 to €125. Taking into account that multiple applications will be more easily available due to the abolishment of the unity of Locarno class requirement, most applicants will end up with substantively lower official fees.

The bad news for design holders is that the renewal fees, especially those for the 3^rd and 4^th renewal will be increased significantly (first renewal fee from €90 to €150, second renewal fee from €230 to €250, third renewal fee from €150 to €400, fourth renewal fee from €180 to €700).

4. 3D printing (from 1 May 2025)

Design holders will be given a new right to prohibit creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product in which the design is incorporated or to which the design is applied.

5. Designs in transit (1 May 2025)

Similar to the EU trade mark regime, design holders will be entitled to enforce their rights against products which are not intended to be released for free circulation in the EU but are merely moved in transit through the EU.

6. Visibility (from 1 May 2025)

Article 18a clarifies 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. However, Recital 13 of the Regulation provides that this does not mean that all design features of the actual product need to be visible at any particular time or in any particular situation of use in order to benefit from design protection. An exception to that principle applies to the design protection of component parts of complex products, which need to remain visible during normal use of that product.

7. Clarification on disclosure (from 1 May 2025)

The new Regulation will no longer contain Art 110a (5) which provided that a design which has not been made public within the territory of the EU shall not enjoy protection as an unregistered Community design. The aim of this article, which was enacted at a time when several new countries were joining the EU, was to make sure that a disclosure in a non-EU country would not lead to an unregistered EU design right, if the disclosure took place before the country had joined the EU.

National courts in the EU (for instance the Federal Supreme Court in Germany) interpreted this Article as meaning that the protection of an unregistered design requires first disclosure in the physical territory of the EU, in contrast to the standard for destroying novelty of a design, which also takes into account disclosures elsewhere in the world, provided they could reasonably have become known to the public which is based in the EU. The combined effect of these provisions under the current law is that designs first disclosed outside the EU (such as at trade fairs in the UK, US or Asia) can never be entitled to EU unregistered design right.

Due to the removal of Art 110a(5) it can be expected that national courts as well as EU courts will now apply the same standard for disclosure for the purposes of obtaining unregistered design protection in the EU as with novelty, meaning that designs first disclosed at (e.g.) international trade fairs in the UK, US and Asia should be entitled to EU unregistered design right provided that first disclosure could reasonably have become known to the public within the EU.

Nonetheless, since it is still uncertain how the courts will interpret the removal of Art 110a (5), it is recommendable to first disclose a design within the physical territory of the EU for the time being, if one intends to only rely on unregistered EU design protection. If first disclosed outside the EU, the safest course of action remains to file for a registered EU design within the 12-month novelty grace period.

8. Representation of EU designs (from 1 July 2026)

Design applicants, especially from countries in which it is normal practice to file more than seven representations (e.g. USA, Japan) will be relieved that the limitation to seven views will be lifted. The exact number of admissible views will be determined by secondary legislation which is why this change will only enter into force on 1 July 2026.

Further requirements regarding the representation of the design (e.g. new types of views (3D views), visual disclaimers, etc.) will be determined by secondary legislation and/or a decision of the Executive Director of the EUIPO.

9. Repair clause (Regulation: from 1 May 2025m, Directive: 9 December 2032)

So far, the repair clause in the old Regulation, which prevents design rights being conferred for spare parts used merely to restore the original appearance of a complex product (such as car parts), was transitional. The new Article 20a of the Regulation makes the repair clause permanent. Further, the new Directive (Article 19) requires the EU member states to implement a repair clause in their national laws. However, within a quite long transitional period of 8 years, namely until 9 December 2032, existing designs for spare parts will still enjoy protection.

The repair clause provides that design protection is not conferred to component parts whose appearance is dependent on the appearance of the complex product concerned (“must-match” spare parts). In line with the ruling of the Court of Justice of the EU in case C-397/16, consumers need to be duly informed of the origin of the product to be used for repairing the complex product.