Eu Directive on Legal Protection of Designs

Introduction and Resources

December 24, 1998

William T. Fryer, III

Directive 98/71/EC of the European Parliament and of the Council - October 13, 1998 Published October 28, 1998 Available on Lexis under EULAW

Summary. This report introduces the new EU Design Directive and concludes with an analysis of some key Directive features. The European Union has published a Design Directive to unify national design laws. The Design Directive has several important features, while leaving some flexibility to members on issues remaining unsettled. A copy of the Design Directive is on this web site.

Background. The European Union (EU) now consists of 15 members (Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, The Nederlands, Portugal, Spain, Sweden and United Kingdom). It has implemented several intellectual property (IP) directives that resulted in relatively uniform national laws. The EU recently published a directive on design protection (Design Directive).

After a directive is published, usually a regulation is published that sets up a EU system for that form of IP. For example, the Community Trademark Registration System began operation in 1996, administrated by the EU office in Alicante, Spain. This EU office has a web site with useful information the Community Trademark.[link to the EU Alicante office web site]. In the same sequence, the next major event concerning EU design protection is likely to be the EU regulations that will establish a Community Design Registration System, to be administrated by the EU Alicante office. The Community Design Regulation and Rules have been drafted and await editing to be consistent with the recently published Design Directive.

The EU Design Directive provisions give members some flexibility to make changes, within certain limits, on several features. Other provisions set forth exactly what each member must provide in their design protection registration system. The more general provisions are usually on topics where there are differences among the members on what law to incorporate.

Directive Text. The full text of Directive 98/71/EC on protection of designs is available on this web site.

Outline of Directive Main Features with Cross References to Articles. This section provides a list of the main Design Directive features with cross references to the relevant articles. The list sequence should facilitate review. The Design Directive establishes the basic structure of EU members' design registrations systems.

Role of a Directive -- Intro ##, 2, 3, 4, 9, 10, 21, 19 and 21; art. 3(1).

Design Definition --- Arts. 1(a) and 11(1).

Novelty (required for protection) -- Intro # 9; arts. 3(2), 4, and 11(1)(b).

Individual Character (required for protection) -- Intro # 13; arts. 3(2), 3(3)(a), and 5.

Visible Product Features (requirement for protection) -- Intro ## 11 and 12; art. 3(4).

Publication of Design -- Arts. 2 and 6

Public Disclosure of a Design -- Art. 6.

Grace Period -- Art. 6(2).

Exclusions, Including Dictated by Technical Function and Interconnection -- Intro ## 14, 15 and 16; arts. 7 and 13.

Public Policy -- Intro ## 16 and 18; art. 8 Protection Scope -- Arts. 3 and 9

Spare parts and Complex Product Definition (involved in the dispute over component part protection) -- Intro # 12, 19 and 20; Art.1(c) and 3(3).

Protection Term -- Intro # 17; Art. 10.

Infringement - Intro # 14; arts. 9, 12, 13 and 15.

Registration Refusal and Invalidity -- art. 11.

Relation to Other National IP Laws -- Intro ## 5, 6, 7 and 8; arts. 2, 11(1)(d), 11(2), 11(3) 16 and 17.

Transitional Provisions -- art. 14.

Green Paper on Piracy and Counterfeiting -- art. 18.

Analysis. In general, the EU national design protection registration systems, under the Design Directive, will function based on a requirement of novelty as of the filing date, with a one year grace period before filing for the design owner's publication of a design. Registration protection continues for five years, renewable for a total of 25 years. Novelty is relative, based on whether the information has become accessible in the EU.

A protected design must have individual character, standing out in a design sense. Exclusions from protection are extensive, requiring careful review of each product to determine what is protected. Infringement determination is relatively straight forward, based on whether a product has a novel appearance.

Special topics. The Design Directive has several important features that warrant special attention.

VISIBLE PROTECTED FEATURES. The exclusion from protection of non-visible features will make the determination of what is protected more complicated. The Design Directive could be interpreted to protect only product features that are visible during regular product use. Whether this protection is the same as U.S. law, or more limited, is a topic needing further analysis. A preliminary review indicates the Design Directive requires a more limited scope of protection that U.S. design patent law. It is one of several provisions in the Design Directive that makes protection of component parts more difficult.

NOVELTY - PRIOR ART. The scope of prior art under the Design Directive will be hard to apply, in some situations, making design registration enforcement more difficult. The question to be determined in each situation is what has been accessible in the EU. On the other hand, the approach used makes good sense from a design point of view, as the resource for design improvement has to be related to a relevant, accessible body of prior creations, on which progress is built. Clearly there is a major difference between U.S. design patent law, the new Japanese Design Right law and the Design Directive on this topic. A topic warranting careful consideration is what novelty standard for prior art should be applied to design registrations, and why should the design novelty standard be different than the one for utility patents. An preliminary review suggests that design creativity would be enhanced when it is referenced, through the novelty criteria, by the approach followed in the EU Design Directive. It is a topic that warrants careful consideration in global design law harmonization discussions.

MECHANICAL FIT FEATURES. There are special provisions in the Design Directive that apply to mechanical features that allow one product to fit together with another product. Protection is excluded for these features in most situations. This topic has a long history in the UK design registration and Design Right laws. It has important concerns for Lego brand products. The limits created by the Design Directive are interesting subjects for analysis. Whether such limits are needed in view of the restriction against protection of purely functional features is an important question.

COMPONENT PARTS AND PRODUCT REPAIR. The major debate in developing the Design Directive was on whether component parts used for repair should be protected. This dispute was the major reason that the Design Directive took seven years to complete, and it is not resolved yet. The Design Directive merely sets a cooling off period on this issue, so the Design Directive could be published to implement its uncontested provisions..

A proposal considered was to grant a compulsory license to use component parts to repair all products, after three years of protection. Spare parts for cars were the primary focus, with well organized non-original equipment manufacturers (copiers) pitted against a very strong group of car manufacturers (originators). The copiers had strong arguments that served the public interest in reducing repair costs. The originators had the fundamental incentives of intellectual property law and already present Design Directive reasonable exclusions from protection in their favor. The limits imposed by standard design law principles were not enough to satisfy the copiers that enough component parts could be copied legally. Even the general principle followed in the U.S., for example, that patented combinations could be repaired without infringement, did not influence the outcome of this debate, although it appears to be a significant consideration..

The copiers insisted on a specific provision authorizing copying of component parts to repair all products, a proposal that had a wide ranging impact across many industries. Changes were made in the Design Directive due to pressure from the copiers, but the dispute over copying component parts was not resolved. The Design Directive contained no specific authorization to copy component parts. The plan is to implement the directive and attempt to work out a compromise informally in the near future.

RELATION TO NATIONAL IP LAWS. An unresolved topic on a national level was the relation between the national design registration systems and other national IP design protection, like copyright law. It is a fact that some designs are protected by more than one IP form. Concerns were expressed that the protection overlap extended, to some degree, for expired registered designs. There were strong EU member opinions on all sides of this question. Even in the U.S. some of these issues have not been resolved in the opinion of several experts.

NEXT STEP - EU COMMUNITY DESIGN SYSTEM. The EU has prepared a comprehensive Community Design System Regulation and Rules to implement a regional design protection system. This system will establish a centralized filing program and protection that applies to all members, with certain limits. It will be administered by the EU Office in Alicante, Spain [link to Alicante web site address]. It is likely that in the near future key design protection documents on the EU Community Design System will be available on the Alicante office web site.

The Community Design Regulation is revolutionary and very effective in many respects. It combines features that serve the real needs of design owners, like market entry protection, giving protection without first filing an application for registration. The Community Design Regulation will have a very significant impact on the evolution of global design law and procedure.

OTHER NEAR FUTURE DESIGN PROTECTION DEVELOPMENTS. In addition to the aforementioned Community Design Regulation, there will be a diplomatic conference in June 1999 on the Hague Agreement Concerning the International Registration of Industrial Designs, a revision of the current Hague Agreement Concerning the International Deposit of Industrial Designs. The proposed text for the diplomatic conference should be available on the WIPO web site under the Hague System heading [link to HA WIPO page]. The EU Community Design will be one of the choices for registration under the revised Hague Agreement. More information on this development can be found on the FRYER INSTITUTE WEB SITE .

Conclusions. The EU Design Directive is a major event in improving global design protection. After the diplomatic conference on the revised Hague Agreement, it is likely that discussions will begin on global design law harmonization, under the guidance of the World Intellectual Property Organization. The EU Design Directive and the upcoming Community Design System have many useful features that need to be studied carefully as a part of this global harmonization review. It is an exciting time for design protection improvement.

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