The Design Package. The reform of design law in the European Union.

Introduction

October 23, 2024 marked a historic milestone in European design law with the final adoption of the long-awaited "Design Package." This fundamental reform, which was more than 20 years in the making, delivered two new European legal instruments that will fundamentally reform and modernize design law.

The first instrument concerns Regulation (EU) 2024/2822 of the European Parliament and of the Council of October 23, 2024, which Regulation (EC) No. 6/2002 changes and Regulation (EC) No. 2246/2002 revokes. The second instrument is Directive (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs, which Directive 98/71/EC fully replaced effective December 9, 2027.

The reform was urgently needed. European design legislation dated back to 1998 (Directive) and 2001 (Regulation), a time when digital designs, virtual products and 3D printing technology were in their infancy. It is no exaggeration to say that the previous legislation had not only become obsolete in terminological terms - for example, it continued to speak of "Community Designs" long after this terminology had become obsolete - but also, in terms of content, was out of step with today's technological reality.

Below, our lawyers specializing in design law thoroughly analyze what this reform means: what elements have been retained, what changes have been made, when the new provisions will take effect and what challenges still lie ahead.

1. What is retained from the old regulation and directive

Although the Design Package marks a major reform, many fundamental principles of design law remain unchanged:

1.1 Conditions of protection

The conditions for protection remain the same. A model is still required:

• New are
• Having a character of your own
• Not be contrary to public order or morality

The concepts of novelty and individual character are not changed by the new regulation and directive. A design is still considered new if no identical design has been disclosed before the filing date or, if priority is claimed, before the priority date. Designs are considered identical if their features differ only in insignificant details.

A design shall be deemed to have individual character if the overall impression it creates on the informed user differs from the overall impression created on such a user by designs disclosed prior to the filing date or priority date. In assessing individual character, the degree of freedom of the designer shall be taken into account.

1.2 Disclosure and technical aspects

The definition of disclosure of a design also remains unchanged, as do the provisions relating to designs determined solely by their technical function (the doctrine from the Doceram ruling of the 2018 Court of Justice remains relevant) and regarding connecting elements.

1.3 Scope and duration of protection

The scope of protection has not changed. Protection still extends to any design that does not create a different overall impression on the informed user. In assessing the scope of protection, the degree of freedom of the designer is taken into account.

The duration of protection also remains unchanged:

• A registered design is protected for 5 years from its registration and may be renewed for one or more additional 5-year periods, not to exceed 25 years from the date of filing.
• An unregistered Union design is protected for 3 years from the date it was first disclosed within the European Union.

The provisions on exhaustion of rights remain largely the same, with one minor change: the new regulation now explicitly refers to products placed on the market in the European Economic Area, whereas the old regulation spoke of products placed on the Community market.

2. The changes by the new regulation and directive

2.1 Terminology

A first important change concerns terminology. The new regulation now refers to "Union designs" or "EU designs" instead of "Community designs." This change was much needed as the term "Community" has largely been replaced by "Union" since the Lisbon Treaty (2009).

Accordingly, the "Community design court" is replaced by the "Union design court," and any reference to the "Office for Harmonization in the Internal Market" is eliminated and replaced by the "European Union Intellectual Property Office" (EUIPO).

These terminological changes have no substantive impact but ensure consistency with the current EU institutional framework and with the terminology used in other intellectual property rights, such as the Union trademark.

2.2 Definitions

Modernization of the model concept

The definition of what constitutes a "model" has been substantially expanded and modernized. Whereas the old definition spoke of "the appearance of a product or part of a product derived from the characteristics, in particular the lines, outline, colors, shape, texture and/or materials, of the product itself and/or its ornamentation", the new definition explicitly adds, "including the movement, transition or any other type of animation of those features“.

This addition is crucial for protecting dynamic designs such as animations in user interfaces, moving logos or products with moving elements. In the digital age, such dynamic designs have become increasingly important, and the new definition recognizes this reality.

Case study: An animation in an app interface can now enjoy explicit protection as a design. Think of specific transition effects between screens, a unique way a menu unfolds, or a characteristic loading animation. Previously, it was unclear whether such dynamic elements were covered by design protection.

Extension of the concept of production

The definition of "produce" has also evolved significantly. The new definition now explicitly includes:

• objects "regardless of whether it is embodied in a physical object or realized in nonphysical form“
• “graphic works or symbols, logos, surface patterns, typographic fonts, and graphical user interfaces“

This extension is of great importance for the digital economy and virtual environments. Products in metaverse environments, virtual realities, augmented reality applications, as well as light compositions or projections can now explicitly be considered "products" and thus enjoy design right protection.

Case study: A designer who has developed a unique virtual furniture line for use in metaverse platforms can now obtain clear design protection for these digital creations even though they do not exist in physical form. The same goes for unique lighting installations or projection patterns used in architecture or events.

2.3 Rights associated with registration

Protection against 3D printing

The holder of a registered design has been given an important new power specific to 3D printing technology. Article 19(2)(d) of the new regulation (and Article 16(2)(d) of the new directive) allows the design holder to prohibit:

“the creation, downloading, copying and sharing or distribution to others of a carrier on which or software incorporating the design in order to create a product incorporating the design“.

This provision is a direct response to the challenges that 3D printing technology poses to design owners. In practice, it means that sharing or uploading Computer-Aided Design (CAD) files that reproduce a protected design without permission is now explicitly prohibited. This also applies to the inclusion of protected designs in 3D printers or software that can automatically reproduce such designs.

It is important to note that this provision does not limit the exception for acts done privately and for non-commercial purposes. An individual may still reproduce, for their own personal use, a protected design using a 3D printer, as long as the printer itself does not contain a stored version of the design.

Case study: A company that offers or sells 3D printable files of a protected designer piece of furniture can now be targeted directly by the design holder, even before actual physical copies have been produced. This gives design owners a preventive weapon against digital distribution of their protected designs.

Measures against cross-border violations

The second new power concerns the possibility for design holders to prevent the introduction of infringing products from third countries, even if these products are not intended to be marketed in the EU (for example, in the case of transit).

According to Article 19(3) of the new Regulation (and Article 16(3) of the new Directive), the holder of a registered design shall prevent third parties:

“products from third countries which have not been put into free circulation in the Member State in which the design is registered to be put into circulation in that Member State, if the design is identically incorporated in or applied to such products, or if the design cannot be distinguished in its essential characteristics from such products, and the consent of the right holder has not been obtained“

However, this right shall lapse if, during the proceedings to determine whether infringement has occurred, the declarant or holder of the products proves that the design holder is not entitled to prohibit the marketing of the products in the country of final destination.

This provision significantly strengthens the position of design holders in the fight against counterfeiting and facilitates action by customs authorities. Acts that previously fell into a legal gray zone (such as transit) can now be dealt with more clearly.

Case study: A European furniture manufacturer with design rights in the EU can now take action against a shipment of counterfeit furniture from Asia transiting through a European port to a third country, unless the importer can prove that the furniture manufacturer does not own or can assert design rights in the country of final destination.

2.4 Exceptions

In addition to the existing exceptions (acts in the private sphere for non-commercial purposes, acts for experimental purposes, and reproductions for illustration or teaching purposes), two important new exceptions have been added:

Referral exception

Article 20(1)(d) of the new Regulation (and Article 18(1)(d) of the new Directive) provides that design rights cannot be exercised against:

“acts done to identify or refer to a product as that of the holder of the design right.“

This exception is intended to allow comparative advertising and informative referencing. The recitals of the new regulation and directive show that the legislator wants to use this to allow "referring use in the context of comparative advertising."

This exception can be seen as a response to the Nintendo ruling of the Court of Justice on Sept. 27, 2017, in which the Court attempted (in an unsatisfactory manner, according to some legal experts) to bring images of protected products for informational purposes under the existing exception for teaching or citation purposes.

Case study: A manufacturer of compatible smartphone accessories may now use images of a protected smartphone model to indicate that its products are compatible with that particular model, without infringing on the smartphone manufacturer's design rights.

Commentary, criticism and parody

Article 20(1)(e) of the new regulation (and Article 18(1)(e) of the new directive) introduces an exception for:

“acts done for the purpose of comment, criticism or parody“

This exception, inspired by copyright law, aims to promote artistic expression and free speech. Recital 18 of the new Regulation (and recital 31 of the new Directive) points out that the use of a design by third parties should be possible for artistic expression and that the Regulation and Directive should be applied in a manner which guarantees fundamental rights and freedoms, in particular freedom of expression.

Case study: An artist who satirically reinterprets a well-known furniture design into a work of art to comment on consumerism can invoke this exception and is not considered to be infringing on design rights.

Both new exceptions - as well as the existing exception for reproduction for teaching or learning purposes - apply only if the acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design. Thus, a competitor may not profit from the fame of a protected design under the guise of comparative advertising, freedom of expression or artistic freedom.

The precise scope of these new exceptions will undoubtedly be further delineated by case law.

2.5 Symbol for registered models

The new regulation and directive introduce an official symbol that the holder of a registered design can use to inform the public about the registration of his design. This symbol consists of the letter "D" surrounded by a circle: ⓓ

Article 26a of the new regulation (and Article 24 of the new directive) provides that this symbol may be affixed to the product, possibly supplemented by the registration number or a hyperlink to the entry in the register.

This symbol is similar to other well-known symbols for intellectual property rights, such as © for copyright or ® for registered trademarks. Its use is entirely optional and has no legal effect on the validity or enforceability of the design right.

In practice, however, this symbol can have a useful preventive effect by alerting potential infringers that the design is protected, which can reduce the risk of so-called "innocent infringement."

2.6 Tender procedure

One of the main objectives of the European legislator was to simplify and modernize the registration procedure. Several important changes have been made in this area:

Modernization of display requirements

In addition to the data for identification of the applicant, the application for registration must now "contain a sufficiently clear representation of the design from which the object for which protection is sought can be identified“.

This formulation is based on the Jägermeister ruling of the Court of Justice on July 5, 2018, which stressed that the representation of the design must be sufficiently clear and precise to determine the object of protection.

Article 26(1) of the new directive specifies that this representation may be made "In some form of visual reproduction, in black and white or in color". She can "be static, dynamic or even animated" and can be accomplished "by any appropriate means involving generally available technology, including drawings, photographs, videos, computer imaging or computer modeling“

This modernization is critical for protecting new types of models, such as user interfaces with animations or products with moving elements. Previously, technical requirements for displaying models were often limited to static images, which made it difficult to adequately display and protect the dynamic aspects of a design.

Case study: A designer of an innovative user interface with unique transition animations can now submit a video that shows these animations, rather than having to rely on a series of static images that inadequately represent the animation.

Designation of products without effect on scope of protection

The new regulation and directive still require identification of the products in which the design will be incorporated or to which it will be applied, but now explicitly add that "statement of products shall not prejudice the scope of protection of the design“.

This addition codifies the case law of the Court of Justice, in particular the Group Nivelles ruling of September 21, 2017, in which the Court ruled that the protection of a design extends to any design that does not produce a different overall impression on the informed user, regardless of the type of product in which the design is incorporated or to which it is applied.

This means in practice that a design registered for a piece of furniture, for example, may also enjoy protection against use of the same or similar design for a completely different product (for example, an electronic device), if such use does not create a different overall impression on the informed user.

Abolition of unit of class in multiple applications

A very practical improvement concerns the elimination of the rule of unity of class in multiple applications. Whereas previously all models in a multiple application had to belong to the same class of the Locarno classification, this requirement has now been removed.

Article 37(1) of the new regulation now allows a multiple application to include up to 50 designs, regardless of whether they belong to different classes. This facilitates applications for designers and companies operating in different product categories.

Case study: A fashion designer who has designed clothing (Class 2) as well as accessories (Class 3), footwear (Class 4) and textile patterns (Class 5) can now include all these designs in one multiple application, significantly reducing administrative burdens and costs.

New filing date and renewal scheme

The date of filing an application for registration is now the date the applicant submitted the application with the required information and paid the fees, rather than the date of filing the application.

For renewal of a registered design, the request must be filed and the renewal fee paid within a minimum period of 6 months prior to the expiration of the registration. Failing this, the request may still be filed within a further 6-month period after the expiration of the registration (or subsequent renewal), provided that a renewal fee is paid within the same 6-month period.

2.7 Grounds for rejection and nullity.

Separation of grounds for refusal and grounds for nullity

The new directive now contains separate articles for grounds for refusal (Article 13) and grounds for nullity (Article 14), where in the old directive they were contained in one article. This increases clarity and legal assistance.

New grounds for refusal

The new directive has removed failure to meet protection requirements as a ground for refusal. This means that agencies will no longer examine ex officio the novelty or individual character of a design when applying.

However, she added a new "mandatory" ground for refusal: the misuse of any of the elements listed in Article 6ter of the Paris Convention (such as flags, arms and other emblems of states).

In addition, member states now have the option to refuse registration where the design contains a total or partial reproduction of elements belonging to the national cultural heritage.

New grounds for nullity

Three important grounds for nullification have been added:

1. Unlawful appropriation: a design will be declared invalid if a decision is before the court that the holder of the design right is not entitled to it under the law of the Member State concerned;
2. Conflict with older distinctive characters: a design will be declared invalid if a distinctive sign (such as a trademark) is used in a subsequent design, and Union law or the law of the Member State concerned applicable to that sign allows the right holder of the sign to prohibit such use.
3. Conflict with copyright: a design will be declared invalid if it uses without permission a work protected by copyright in the state concerned....

In addition, member states may optionally provide for the invalidity of a design if it contains a total or partial reproduction of elements belonging to the national cultural heritage.

2.8 Repair clause

Historical context and issues

One of the main objectives of the reform was to settle definitively the issue of spare parts ("must match" parts), which until now had been only partially harmonized and was a source of internal market fragmentation and legal uncertainty.

The discussion around spare parts focused mainly on the auto industry. While manufacturers argued for protection of spare parts, parts manufacturers opposed it. With expensive products such as cars, if a visible part (such as a bumper or mirror) is damaged, an owner will usually only want to replace that part, not the entire vehicle. Many of these parts must not only fit technically ("must fit"), but must also fully match the original design in appearance ("must match").

If spare parts enjoy design protection, owners are practically forced to go to the original manufacturer for replacements, leading to a de facto monopoly.

The new repair clause

The new regulation and directive now both contain a provision entitled "repair clause" that definitively settles this issue. Article 20a(1) of the new regulation (and Article 19(1) of the new directive) states:

“No protection shall be granted to a registered design which constitutes a component part of a complex product whose appearance determines the design of the component part and which is used exclusively for the purpose of repairing that complex product so as to restore its original appearance.“

This provision is essentially a codification of the Acacia ruling of the Court of Justice on Dec. 20, 2017, in which the Court provided guidelines for interpreting the term "repair clause."

To take advantage of this clause, the manufacturer or seller of such a part must clearly and visibly inform consumers of:

• The commercial origin of the part intended for use in the repair
• the identity of the manufacturer of that part

This enables consumers to make informed choices between different spare parts providers.

Importantly, the manufacturer or seller need not guarantee that the parts it manufactures or sells will actually be used by end users solely for repair purposes. Such a guarantee would be impossible in practice.

Transition period

The new Directive provides for a substantial transitional period of 8 years for the implementation of this repair clause. Where the law of a Member State provided protection for registered designs which constitute component parts of complex products on December 8, 2024, that Member State may maintain such protection for designs for which registration was applied for before December 8, 2024, until December 9, 2032.

2.9 Cumul with copyright

Historical context and issues

The old regulation and directive provided that a design also enjoys copyright protection from the moment it is created or fixed in a particular form, but left it to the member states to determine the conditions under which such protection is granted, including the degree of originality required.

This led to significant differences between member states. For example, Portugal stipulated that industrial models and design works are protected by copyright only if they constitute an "artistic creation," i.e., if they exhibit some degree of originality.

The Court of Justice in its Cofemel ruling of Sept. 12, 2019 clarifies that copyright protection for an object - regardless of its type - only requires that it meet two conditions:

1. It must be an original work in the sense that it reflects the author's personality and demonstrates his free and creative choices
2. It must be identifiable with sufficient accuracy and objectivity.

The new cumulation scheme

The new regulation and directive integrate this case law and now provide that cumul of protection occurs once the conditions of (European) copyright law are met. The specification that these conditions are determined by each member state has been removed.

Article 96(2) of the new Regulation (and Article 23 of the new Directive) now simply provides that a design protected as a Union design is also eligible for copyright protection from the date on which the design was created or fixed in form, provided that the conditions of Union copyright are met

This means that if an object meets both the conditions for design protection (novelty and individual character) and the conditions for copyright protection (originality and identifiability), it automatically enjoys double protection, regardless of the nature of the object. Member States may not set additional criteria (such as artistic value, higher degree of originality, aesthetic effect, etc.) for this cumulation.

However, it is important to note that this cumul is not automatic or self-evident, as the conditions of protection for designs and for copyright are different. A design can be new and distinctive without necessarily being considered an original intellectual creation, and vice versa.

2.10 Presumption of validity of national or Benelux designs

The new Directive fills a gap in the old Directive by including in Article 17 a presumption of validity for registered national (or Benelux) designs. In the context of an infringement procedure, the registered national (or Benelux) design is presumed to fulfil the requirements for protection and is therefore valid.

This presumption was already present in the old Community Designs Regulation, but was missing in the old National Designs Directive. By correcting this omission, the legislature is ensuring greater consistency and legal certainty.

This presumption is rebuttable and can be challenged through a counterclaim for annulment filed by the defendant in infringement proceedings.

2.11 Right to the model in the directive

The new directive incorporates a provision that was already present in the old regulation but was missing in the old directive, regarding who a design belongs to.

Article 11 of the new directive states that:

• The right to the design belongs to the designer or his assignee
• If the design is jointly designed by several persons, the right to the design belongs to them jointly
• If a design has been designed by an employee in the performance of his duties or according to the instructions of his employer, the right to the registered design shall belong to the employer, unless otherwise agreed or provided by national law

This arrangement already existed in Benelux law (Article 3.8.1 BTIP), so its impact in the Benelux countries will be limited.

2.12 Abolition of the possibility of national protection for unregistered designs

The new directive removes the possibility that Member States had under the old directive to protect unregistered designs at the national level. Article 3 of the new directive now explicitly states that "Member States shall protect designs only by registration of those designs."

In practice, no Member State had opted for a system of unregistered designs at the national level, so this change will have little impact. However, unregistered designs will continue to be protected at the EU level through the unregistered Union design system provided for in the Regulation.

2.13 Right of prior use

The new directive introduces in Article 21 a provision already present in the old regulation but missing in the old directive, namely the right of prior use.

Under this provision, a third party who in good faith has commenced use of a design in a Member State (or has made serious preparations to do so) before the date of filing or priority of a design subsequently registered by another may continue such use for the purposes for which it was commenced, even if such use is within the scope of protection of the registered design.

This "right of prior use" already exists in Benelux law (Article 3.20 BTIP), so the impact in Benelux countries will be limited.

2.14 Administrative nullity procedure

An important innovation in the new directive is the possibility for member states to establish an administrative procedure by which the invalidity of a registered design can be claimed from their offices (national or Benelux), in addition to the possibility to do so through a court.

Article 31 of the new directive provides that if member states establish such a procedure, it must, at a minimum, provide for invalidation of a design when:

• It does not meet the definition of a design or the requirements for protection
• It constitutes a misuse of elements mentioned in Article 6ter of the Paris Convention
• It conflicts with an older design protected from a date prior to the filing or priority date of the design

The persons authorized to initiate this administrative nullity procedure are listed exhaustively in the directive.

It is up to the member states to decide whether to introduce this administrative procedure. Such a procedure could facilitate access to the nullity remedy and reduce costs for interested parties, as court proceedings are often more expensive and time-consuming.

3. Entry into force

The new regulation entered into force on December 9, 2024 (the 20th day after publication in the Official Journal of the European Union). It applies from May 1, 2025, except for certain technical provisions that will apply only from July 1, 2026.

The new regulation repeals Regulation 2246/2002 (on fees payable to the EUIPO) effective May 1, 2025.

The new directive entered into force on Dec. 9, 2024. However, certain articles (4, 5, 7, 8, 9, 20 and 22) will not apply until Dec. 9, 2027.

The new directive repeals the old directive as of December 9, 2027, the date by which member states must have transposed the new directive into their internal legal order.

The combination of different application dates creates a complex transition period in which both the old and new provisions may coexist, depending on the specific aspect of design law that applies. In practice, it is therefore appropriate to analyze these transitional provisions carefully to ensure that the correct rules are applied in specific cases.

4. Future challenges and developments

4.1 Implementing regulations

The adoption of the Design Package does not mean that design law is now fixed. Several implementing regulations will need to be adopted to implement certain provisions of the new regulation, such as:

• Elements to be indicated in an application for registration of a Union design (Article 36a of the new Regulation)
• The elements that must be included in a multiple application (Article 37a)
• The documents that must be produced to claim priority of a previous application (Article 42a)

These implementing regulations will likely contain more technical details on the practical implementation of the new rules and may have significant impact on the day-to-day practice of model applications.

4.2 The Treaty of Riyadh

An important international development is the adoption of the Riyadh Convention on Design Law of Nov. 22, 2024 (also known as the "Design Treaty“).

This treaty, under the auspices of the World Intellectual Property Organization (WIPO), aims to simplify the procedures for registration and renewal of designs in the states that have ratified it.

The convention establishes a maximum list of indications or elements that designers must submit with their application for registration. It also allows applicants to choose the forms of representation of their design(s) in their application and to include multiple designs in one multiple application.

The convention defines the conditions for granting a filing date and provides for a grace period of 12 months from the first publication of the design, during which such publication does not affect the validity of the registration. It also allows applicants to keep their designs unpublished for a period of at least six months after obtaining a filing date.

In addition, the Convention explicitly links the protection of designs to the protection of traditional knowledge and traditional cultural expressions. It provides for technical assistance to developing and least developed countries to facilitate the implementation of the convention.

The treaty will enter into force after it has been ratified by 15 contracting parties. It will be interesting to see how this treaty and the EU Design Package will complement and influence each other.

4.3 Practical impact for businesses

Companies operating in sectors where design is important will have to adapt to the new regulations. This includes:

• Updating their intellectual property strategies to take into account new opportunities for protection of dynamic designs and non-physical products
• Reviewing their procedures for model applications, taking into account the simplified rules for multiple applications
• Implementing processes to use the new ⓓ symbol on their products
• Evaluating the impact of the repair clause on their business model, especially for manufacturers of complex products such as cars
• Developing strategies to act against digital distribution of their designs via 3D printing files