On 18 November 2024, the EU published Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, following its proposal to revise the pre-existing EU design laws in November 2022. Both the Regulation and the Directive will enter into force on 8 December 2024. While the Regulation will apply from 1 May 2025, the Directive must be incorporated into Member States' national laws within 36 months (i.e. by 9 December 2027).

In this article, we will consider (i) the key amendments coming in to force in the EU; (ii) their potential impact; and (iii) how the Regulation and Directive might influence future reform in the UK.

EU: Key Amendments

•  Terminology and definitions. 

The Regulation and Directive make several updates to the language of EU design law - "Community Designs" will be known as "European Union Designs"; the definition of "design" will include "the movement, transition or any other sort of animation" relating to a product's appearance; and the definition of "product" will cover "non-physical" products such as logos and graphic designs. 

Why the change and what impact will it have?

The changes seek to bring EU design terminology in line with EU trade mark language (i.e. following the change from "Community Trade Marks" to "European Union Trade Marks"). The definitions of "design" and "product" have also been broadened to reflect recent technological developments, in particular the use of digital and animated designs such as 3D printed files and visual effects in films or adverts.

•  No general requirement of visibility. 

The EU design package clarifies that protection extends to design features that are not visible during a product's use, provided that such features are visible in the application for registration. An example would be the internal components of a phone, such as a battery. While the battery's design can be independently assessed as part of the registration process, it is not visible when the phone is in use. Component parts of a complex product, such as a bicycle wheel, remain subject to the visibility requirement. 

     Why the change and what impact will it have?

The relaxation of the visibility requirement addresses a long-standing question about whether a design must be visible during use to qualify for protection. The EU has offered more extensive coverage for invisible design features in an additional acknowledgment of changing market needs.

• Greater protections for rights holders. 

Third parties are now prohibited from dealing with files that would facilitate production of a registered design product. 

Stricter rules have similarly been put in place for designs in transit, as rights holders can now prevent the movement of products that infringe their registered designs within the EU. For example, if a registered handbag designer were to discover the existence of counterfeit handbags, they could take steps to seize the handbags while they were passing through a Member State. Finally, the Directive includes a new presumption of ownership in favour of rights holders. 

Why the change and what impact will it have? 

The Regulation and Directive's approach to dealing with files is intended to address concerns relating to 3D printing of products which would infringe. Under the new rules, creating, sharing or distributing a digital file that contains a registered design without permission can itself constitute an infringement. Where infringement does incur, the presumption of ownership makes it easier for designers to enforce their rights against illegitimate vendors. 

•  "Repair Clause" and Spare Parts.

Another key change is the introduction of a permanent "repair clause", meaning that registered and unregistered design rights cannot be enforced against spare parts used to repair complex products (and to restore such products to their original appearance).

Why the change and what impact will it have?

The EU's approach to spare parts has been well tested before the courts, particularly in the automotive sector. An EU-wide "repair clause" removes inconsistencies across Member States and, with particular reference to the automotive industry, means businesses can more freelychoose spare parts to repair vehicles, which should increase cost-savings and competition. [Note that manufacturers of spare parts will however still need to have in mind considerations relating to trade marks]. A phased transitional period of 8 years has been agreed meaning that existing protections for spare parts will remain in effect in Member States until 9 December 2032. The lengthy transitional period has been criticised by some.

• New ground for refusal

Member States can ask for the registration of a design to be refused where the design contains a partial or total reproduction of elements belonging to a Member States's cultural heritage. 

Why the change and what impact will it have?

The new ground for refusal aims to protect Member States' cultural identities by preventing the commercial exploitation of their heritage. On the flip side, it may result in higher costs and delay for applicants, as they may need to obtain consent or dispute oppositions from third parties

• Changes in filing rules

The amendments introduce multi-class filings. Moreover, the number of images or representations that can be included in a design application have been increased to [50]. 

Why the change and what impact will it have?

The updated filing rules allow applicants to capture the full scope of their designs, which is especially important for more nuanced or detailed applications. The removal of the unitary class requirement for multiple applications further simplifies the process and reduces application costs.

• Fee changes. 

As above, applicants will no longer incur additional fees for multi-class filings and a flat registration fee has been introduced. However, fees for renewal have increased significantly, particularly in the 3^rd and 4^th renewal periods.

Why the change and what impact will it have?

The changes to the fee approach are intended to encourage applicants to register their designs while reducing the number of designs which are maintained on the register when they are not in use.
 

Impact on the UK 

The changes in the EU may lead to a further divergence between the UK and EU legal frameworks. Given their proximity, rights holders will often need to be aware of the design systems in both the UK and EU and the amendments will add to the complexity.  

Looking ahead, the UK government previously indicated its intention to review and possibly reform the UK design law in its 2022 consultation (see Call for views on designs: Government response - GOV.UK). It remains to be seen how the UK Government will react to the new rules in the EU, but for the meantime the changes will mean further divergence between the two jurisdictions.

Co-authored by Huw Cookson, Elena Varese, Alexia Meade, and Maria Pessina