EU design law reform moves ahead as EU lawmakers reach deal

The EU lawmakers have reached an agreement on the changes to the draft EU Design Regulation, which amends the EU-wide Registered Community Design (RCD) – renamed as EU Design – and the draft Directive, which harmonises national design law between member states. These agreed amendments are set to especially liberalise the spare parts market, set new amounts for the fees to be paid in order to register and renew an EU design, prevent cultural heritage from being registered as design, and provide a longer transposition period of 36 months for the directive.

The introduction of an EU-wide ‘repair clause’ into the harmonised design law is probably the most significant feature of the proposed reform. It is expected to increase competition especially in the automotive spare parts market, but also in many other industries. A repair clause for spare parts means design protection will no longer be conferred to ‘must-match’ spare parts, whose appearance is dependent on the appearance of original parts.

Frankfurt-based intellectual property (IP) expert Fabian Klein of Pinsent Masons said: “The repair clause has been an area of dispute for decades. Creating a level playing field in the EU is therefore certainly welcomed down the stretch. But it also means that countries like Germany will have to cut down their national protection regime to comply with the shortened transition period.”

The introduction of the ‘repair clause’ should have practical implications on the IP strategy of companies in the automobile industry and beyond, according to Klein.

“Design rights are and will be a valuable instrument in the IP toolkit. But because of the repair clause and especially with a view to the general aim of the EU as part of its Green Deal to make products longer-lasting and better reparable, companies should re-evaluate their filing strategies now to ensure they can make the most out of the design system,” he said.

In a compromise deal between the EU Council and Parliament, the transitional period for the introduction of the ‘repair clause’ has been cut from 10 to eight years. Florian Traub of Pinsent Masons said that it would be welcomed by the automotive aftermarket industry.

“Whilst the provisional agreement on transition period will offer clarity for all market participants, it will almost certainly find critics from either side of the argument,” he said.

Other key points covered in the agreement include increased EU-wide fees for design protection, which will be higher than national-only protection schemes to reflect the larger territorial scope of the protection, and the prohibition on registering cultural heritage elements of national interest, such as the traditional costume of a region, as private designs.

While the provisional agreement between the lawmakers will mean the proposed reform will move to the next stage, both Klein and Traub said that the reform could have gone further to make it more future proof.

“It was general understanding that the design system as a whole is functioning well, but could be improved in different aspects – including making it fit for the digital age, and making it better useable for especially SMEs. Therefore, the new proposals do not revolutionise the legal framework, but rather adopt it carefully – at times too carefully, for example with a view to digitalisation,” said Klein.

Traub especially pointed out that the EU institutions are missing an opportunity to clarify the most pressing current questions that the emergence of generative AI poses to the design system.

“The reform does not seek to clarify, for example, whether AI-created designs can be protected as a registered or unregistered design and who would own such computer-generated work,” he said.

As the next step of the legislative progress, the agreed text of the draft regulation and directive now needs to be endorsed and formally adopted by the European Parliament and Council. The provisional agreement of the two co-legislators comes a year after the European Commission published its draft proposals of the reform package.