MERCANTILE
Margarita Dargallo | Jorge Llevat
On October 10, 2024, the European Union officially approved a legislative package reforming the legal framework for design protection. This update affects both EU designs (formerly known as Community designs) and Spanish designs. The new regulations include Directive (EU) 2024/2823 of the European Parliament and the Council (dated October 23, 2024) on the legal protection of designs, which repeals Directive 98/71, and a new Regulation (Regulation (EU) 2024/2822) that amends provisions of Regulation (EC) No. 6/2002 on Community designs. These were published in the Official Journal of the European Union on November 18, 2024.
Objectives of the Reform
The reform has multiple objectives, with three main aims:
To modernize the legal framework for design protection, such as recognizing animated features and user interfaces at the regulatory level.
To harmonize design protection across EU member states, for example, through the inclusion of a repair clause.
To encourage the use of the system by making it more appealing and cost-effective, such as eliminating the “class unity principle” for multiple design applications.
Key Changes
Beyond terminology updates (e.g., renaming “Community designs” as “EU designs”), the reform introduces several significant modifications:
a) Concept of Design
The definition of design has been expanded to include:
Animated features (e.g., movement, transitions, or other animations).
Designs that do not exist in physical formats. The requirement for visibility during use now applies only to components of complex products.
b) Scope of Design Protection
Several changes extend the scope of design protection:
3D printing activities that infringe on design rights are now explicitly considered infringements.
Protection extends to products in transit (i.e., goods within a customs regime that have not entered the market).
The repair clause, a previously controversial limitation to design protection, is now mandatory across all EU member states.
What is the Repair Clause?
The repair clause limits design protection to allow the market for replacement parts. It excludes from protection any designs for components of complex products used solely for repairing the product to restore it to its original appearance (e.g., car parts).
In Spain, this clause already existed under Law 20/2003 on the Legal Protection of Industrial Design. However, its implementation across the EU now includes specific conditions, such as:
The part manufacturer or vendor must clearly and visibly label the product or packaging to indicate its origin and manufacturer.
Manufacturers must act diligently to ensure the part is not used for purposes other than repair.
c) Other Changes
The prior Regulation’s exclusion of unregistered designs not disclosed within the EU has been removed (potentially eliminating the EU-first disclosure requirement for unregistered designs).
States may now invalidate designs based on the use of nationally significant cultural heritage elements.
Member states may optionally assign direct invalidation of designs to national intellectual property offices rather than courts.
Numerous procedural changes have been introduced, such as updates to multiple design applications and the introduction of “Continuation of Proceedings.”
Implementation Timeline
These changes will not take immediate effect:
Member states have 36 months (until December 8, 2027) to implement changes from the new Directive.
The new Regulation will be phased in, with most provisions effective from May 1, 2025, and some delayed until July 1, 2026.