Legal provisions of COM(2022)667 - Legal protection of designs (recast) - Main contents
Please note
This page contains a limited version of this dossier in the EU Monitor.
| dossier | COM(2022)667 - Legal protection of designs (recast). |
|---|---|
| document | COM(2022)667  |
| date | November 28, 2022 |
Contents
CHAPTER - 1
GENERAL PROVISIONS
Article 12 - Scope of application
1. This Directive shall apply applies to:(a)design rights registered with the central industrial property offices of the Member States;
(b)design rights registered at the Benelux Design Office for Intellectual Property ;
(c)design rights registered under international arrangements which have effect in a Member State;
(d)applications for the design rights referred to under points (a), (b) and (c).
2. For the purpose of this Directive, design registration shall also comprise the publication following filing of the design with the industrial property office of a Member State in which such publication has the effect of bringing a design right into existence.
Article 21 - Definitions
For the purpose purposes of this Directive , the following definitions apply :new
(1) ‘office’ means the central industrial property office entrusted with the registration of designs by one or more Member States;
(2) ‘register’ means the register of designs kept by an office;
98/71/EC (adapted)
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(3a) ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, and/or materials of the product itself and/or its ornamentation decoration , including the movement, transition or any other sort of animation of those features ;
(4b) ‘product’ means any industrial or handicraft item other than computer programs , regardless of whether it is embodied in a physical object or materialises in a digital form , including inter alia:
(a) parts intended to be assembled into a complex product, packaging, sets of articles, get-up, spatial arrangement of items intended to form, in particular, an interior environment, and parts intended to be assembled into a complex product;
(b)graphic works or symbols , logos, surface patterns, and typographic typefaces, and graphical user interfaces but excluding computer programs;
(5c) ‘complex product’ means a product which that is composed of multiple components which can be replaced permitting disassembly and reassembly of the product.
CHAPTER - 2
SUBSTANTIVE LAW ON DESIGNS
Article 3 - Protection requirements
1. Member States shall protect designs solely through the by registration of the designs , and shall confer exclusive rights upon their holders in accordance with the provisions of this Directive.2. A design shall be protected by a design right to the extent that if it is new and has individual character.
3. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a)if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter;, and
(b)to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
4. ‘Normal use’ within the meaning of paragraph (3), point (a), shall mean use by the end user, excluding maintenance, servicing or repair work.
Article 4 - Novelty
A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.Article 5 - Individual character
1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
Article 6 - Disclosure
1. For the purpose of applying Articles 4 and 5, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Union Community, before the date of filing of the application for registration or, if priority is claimed, the date of priority. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.2. A disclosure shall not be taken into consideration for the purpose of applying Articles 4 and 5 if the disclosed design, which is identical or does not differ in its overall impression from the a design for which protection is claimed under a registered design right of a Member State, has been made available to the public:
(a)by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer, or his successor in title; and
(b)during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority.
3. Paragraph 2 shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title.
Article 7 - Designs dictated by their technical function and designs of interconnections
1. A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.2. A design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
3. Notwithstanding paragraph 2, a design right shall, under the conditions set out in Articles 4 and 5, subsist in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.
Article 8 - Designs contrary to public policy or morality
A design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality.Article 9 - Scope of protection
1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
Article 10 - Commencement and tTerm of protection
Upon registration, 1. Protection by a registered design right of a design which meets the requirements of Article 3(2) shall be protected by a design right arise with registration by the office.2. A registered design shall be registered for one or more periods a period of five years calculated from the date of filing of the application for registration . The right holder may have the term of protection renewed for one or more periods of 5 years each, up to a total term of 25 years from the date of filing of the application for registration .
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Article 11 - Right to the registered design
1. The right to the registered design shall vest in the designer or his successor in title.2. If two or more persons have jointly developed the design, the right to the registered design shall vest in them jointly.
3. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the registered design shall vest in the employer, unless otherwise agreed or laid down in national law.
Article 12 - Presumption in favour of the registered holder of the design
The person in whose name the design right is registered, or prior to registration the person in whose name the application is filed, shall be deemed to be the person entitled to act in any proceedings before the office in the territory of which protection is claimed as well as in any other proceedings.98/71/EC (adapted)
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Article 1311 - Invalidity or refusal of registration Grounds for non-registrability
1. A design shall be refused registration, or, if the design has been registered, the design right shall be declared invalid where :(a)if the design is not a design within the meaning of Article 2, point (3)l(a); or
(b)if it the design does not fulfil the requirements of Articles 3 to 8.; or
Article 14 - Grounds for invalidity
1. If the design has been registered, the design right shall be declared invalid in the following situations:(a) the design is not a design within the meaning of Article 2, point (3);
(b) the design does not fulfil the requirements laid down in Articles 3 to 8;
(c) by virtue of a decision of the competent court or authority, if the applicant for or the holder of the design right is not entitled to it under the law of the Member State concerned; or
(d)if the design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority, and which is protected from a date prior to the said date of filing of the application, or if priority is claimed, the date of priority of the design:
(i) by a registered Community EU design or an application for a registered Community EU design subject to its registration;
(ii) or by a registered design right of the Member State concerned, or by an application for such a right. subject to its registration;
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(iii) by a design right registered under international arrangements which have effect in the Member State concerned, or by an application for such a right subject to its registration;
98/71/EC (adapted)
2. Any Member State may provide that a design shall be refused registration, or, if the design has been registered, that the design right shall be declared invalid:
(ea)if a distinctive sign is used in a subsequent design, and Community Union law or the law of the Member State concerned governing that sign confers on the right holder of the sign the right to prohibit such use; or
(fb)if the design constitutes an unauthorised use of a work protected under the copyright law of the Member State concerned; or
(gc)if the design constitutes an improper use of any of the items listed in Article 6ter6b of the Paris Convention for the Protection of Industrial Property, or of badges, emblems and escutcheons other than those covered by Article 6ter6b of the said Convention which are of particular public interest in the Member State concerned.
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2. The grounds for invalidity provided for in paragraph (1), points (a) and (b), may be invoked by the following:
(a) any natural or legal person;
(b) any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, if that group or body, has the capacity to sue and be sued in its own name under the terms of the law governing it.
98/71/EC (adapted)
3. The ground for invalidity provided for in paragraph 1, point (c), may be invoked solely by the person who is entitled to the design right under the law of the Member State concerned.
4. The grounds for invalidity provided for in paragraph 1, points (d), and in paragraph 2(ea) and (fb), may be invoked solely by the following:
(a) the applicant for or the holder of the conflicting right;.
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(b) the persons who are entitled under Union legislation or the law of the Member State concerned to exercise the rights in question;
(c) a licensee authorised by the proprietor of a trade mark or a holder of a design right.
98/71/EC (adapted)
5. The ground for invalidity provided for in paragraph 1, point (g),2(c) may be invoked solely by the person or entity concerned by the improper use.
6. Paragraphs 4 and 5 shall be without prejudice to the freedom of Member States to provide that the grounds provided for in paragraphs 1(d) and 2(c) may also be invoked by the appropriate authority of the Member State in question on its own initiative.
7. When a design has been refused registration or a design right has been declared invalid pursuant to paragraph 1(b) or to paragraph 2, the design may be registered or the design right maintained in an amended form, if in that form it complies with the requirements for protection and the identity of the design is retained. Registration or maintenance in an amended form may include registration accompanied by a partial disclaimer by the holder of the design right or entry in the design Register of a court decision declaring the partial invalidity of the design right.
8. Any Member State may provide that, by way of derogation from paragraphs 1 to 7, the grounds for refusal of registration or for invalidation in force in that State prior to the date on which the provisions necessary to comply with this Directive enter into force shall apply to design applications which have been made prior to that date and to resulting registrations.
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6. A design right may not be declared invalid where the applicant for or a holder of a right referred to in paragraph 1, points (d) to (g), consents expressly to the registration of the design before submission of the application for a declaration of invalidity or the counterclaim.
98/71/EC
79. A design right may be declared invalid even after it has lapsed or has been surrendered.
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Article 15 - Object of protection
Protection shall be conferred for those features of appearance of a registered design which are shown visibly in the application for registration.98/71/EC (adapted)
Article 1612 - Rights conferred by the design right
1. The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his the consent of the holder from using it.2. The following aforementioned use shall cover, in particular, may be prohibited under paragraph 1:
(a) the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied;,
(b) importing or exporting a product referred to in point (a);
(c) or stocking such a product referred to in point (a) for those the purposes. mentioned in points (a) and (b);
new
(d) creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product referred to in point (a) to be made.
98/71/EC
2. Where, under the law of a Member State, acts referred to in paragraph 1 could not be prevented before the date on which the provisions necessary to comply with this Directive entered into force, the rights conferred by the design right may not be invoked to prevent continuation of such acts by any person who had begun such acts prior to that date.
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3. By way of derogation from Article 9(1), the holder of a registered design right shall be entitled to prevent all third parties from bringing products, in the course of trade, from third countries into the Member State where the design is registered, that are not released for free circulation in that Member State, where the design is identically incorporated in or applied to those products, or the design cannot be distinguished in its essential aspects from such products, and an authorisation has not been given.
The right referred to in the first subparagraph shall lapse, if, during the proceedings to determine whether the registered design right has been infringed, initiated in accordance with Regulation (EU) No 608/2013, evidence is provided by the declarant or the holder of the products that the holder of the registered design right is not entitled to prohibit the placing of the products on the market in the country of final destination.
Article 17 - Presumption of validity
1. In infringement proceedings it shall be presumed, in the favour of the holder of the registered design right, that the requirements set for the legal validity of a registered design right referred to in Articles 3 to 8 are met.2. The presumption of validity referred to in paragraph 1 shall be rebuttable by any procedural means available in the jurisdiction of the Member State concerned, including counterclaims.
98/71/EC (adapted)
Article 1813 - Limitation of the rights conferred by the design right
1. The rights conferred by a design right upon registration shall not be exercised in respect of:(a) acts carried out done privately and for non-commercial purposes;
(b) acts carried out done for experimental purposes;
(c) acts of reproduction for the purposes of making citations or of teaching;, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.
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(d) acts carried out for the purpose of identifying or referring to a product as that of the design right holder;
(e) acts carried out for the purposes of comment, critique, or parody;
98/71/EC
2. In addition, the rights conferred by a design right upon registration shall not be exercised in respect of:
(fa) the equipment on ships and aircraft registered in another country when these temporarily enter the territory of the Member State concerned;
(gb) the importation in the Member State concerned of spare parts and accessories for the purpose of repairing such craft;
(hc) the execution of repairs on such craft.
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2. Paragraph 1, points (c), (d) and (e) shall only apply where the acts are compatible with fair trade practices and do not unduly prejudice the normal exploitation of the design, and in the case of point (c), where mention is made of the source of the product in which the design is incorporated or to which the design is applied.
Article 19 - Repair clause
1. Protection shall not be conferred on a registered design which constitutes a component part of a complex product, upon whose appearance the design of the component part is dependent, and which is used within the meaning of Article 16(1) for the sole purpose of the repair of that complex product so as to restore its original appearance.2. Paragraph 1 cannot be invoked by the manufacturer or the seller of a component part of a complex product who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the origin of the product to be used for the purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair.
3. Where at the time of adoption of this Directive the national law of a Member State provides protection for designs within the meaning of paragraph 1, the Member State shall, by way of derogation from paragraph 1, continue until …[OP please insert the date = ten years from the date of entry into force of this Directive] to provide that protection for designs for which registration has been applied before the entry into force of this Directive.
98/71/EC (adapted)
Article 14 - Transitional provision
Until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18, Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts.Article 2015 - Exhaustion of rights
The rights conferred by a design right upon registration shall not extend to acts relating to a product in which a design included within the scope of protection of the design right is incorporated or to which it is applied, when the product has been put on the market in the Union Community by the holder of the design right or with his consent.new
Article 21 - Rights of prior use in respect of a registered design right
1. A right of prior use shall exist for any third party who can establish that before the date of filing of the application, or, if a priority is claimed, before the date of priority, the third party has in good faith commenced use within the Member State concerned, or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered design right, which has not been copied from the latter.2. The right of prior use shall entitle the third person to exploit the design for the purposes for which its use has been effected, or for which serious and effective preparations had been made, before the filing or priority date of the registered design right.
98/71/EC (adapted)
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Article 2216 - Relationship to other forms of protection
The provisions of this Directive shall be without prejudice to any provisions of Union Community law or of the law of the Member State concerned relating to unregistered design rights, trade marks or other distinctive signs, patents and utility models, typefaces, civil liability or unfair competition.Article 2317 - Relationship to copyright
A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection by under the law of copyright of that State as from the date on which the design was created or fixed in any form provided that the requirements of Union copyright law are met . The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.new
Article 24 - Registration symbol
The holder of a registered design right may inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter D enclosed within a circle. Such design notice may be accompanied by the registration number of the design or hyperlinked to the entry of the design in the register.CHAPTER 3 - PROCEDURES
Article 25 - Application requirements
1. An application for a registered design shall contain at least all of the following:(a)a request for registration;
(b)information identifying the applicant;
(c)a representation of the design suitable for reproduction, permitting all the details of the subject matter for which protection is sought to be clearly distinguished and permitting publication;
(d)an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.
2. The application for design registration shall be subject to the payment of a fee determined by the Member State concerned.
3. The indication of the products as referred to in paragraph 1, point (d), shall not affect the scope of protection of the design. That shall also apply to a description explaining the representation of the design if such a description is provided for by a Member State.
Article 26 - Representation of the design
1. The representation of the design, as referred to in Article 25(1), point (c), shall be clear, precise, consistent and of a quality allowing for all the details of the matter for which protection is sought to be clearly distinguished and published.2. It shall consist in any form of visual reproduction of the design either in black and white or in colour. The reproduction can be static, dynamic or animated and shall be effected by any appropriate means, using generally available technology, including drawings, photographs, videos, or computer imaging/modelling.
3. The reproduction shall show all the aspects of the design for which protection is sought in one or more views. In addition, other types of views may be provided with the purpose of further detailing specific features of the design, and in particular:
(a)magnified views showing part of the product separately in an enlarged scale;
(b)sectional views where a cutaway portion of the product is shown;
(c)exploded views where dissembled parts of a product are shown separately in one view; or
(d)partial views where parts of a product are shown separately in different views.
4. Where the representation contains different reproductions of the design or includes more than one view, those shall be consistent with each other and the subject matter of the registration shall be determined by all the visual features of those views or reproductions in conjunction.
5. The design shall be represented alone, to the exclusion of any other matter. No explanatory text, wording or symbols may be displayed thereon.
6. Matter for which no protection is sought shall be indicated by way of visual disclaimers, preferably in the form of dotted or broken lines. If this is not possible for technical reasons or because of the type of design concerned, other visual disclaimers may be used, such as shading, boundaries or blurring. Any such visual disclaimers shall be used consistently.
7. Where the representation is accompanied by a description of the design, neither that description nor any verbal disclaimers included therein shall have the effect of limiting or expanding the scope of protection of the design as reproduced in the representation.
8. The Member States' central industrial property offices and the Benelux Office for Intellectual Property shall cooperate with each other and with the European Union Intellectual Property Office to establish common standards to be applied to the requirements and means of design representation, in particular as regards the types and number of views to be used, the types of acceptable visual disclaimers, as well as the technical specifications of the means used for the reproduction, storage and filing of designs, such as the formats and size of the relevant electronic files.
Article 27 - Multiple applications
Several designs may be combined in one multiple application for registered designs. This possibility shall not be subject to the condition that the products in which the design are intended to be incorporated or to which they are intended to be applied all belong to the same class of the International Classification for Industrial Designs.Article 28 - Date of filing
1. The date of filing of a design application shall be the date on which the documents containing the information specified in Article 25(1), points (a) to (c), are filed with the office by the applicant.2. Member States may, in addition, provide that the accordance of the date of filing is to be subject to the payment of a fee as referred to in Article 25(2).
Article 29 - Scope of substantive examination
The offices shall limit their examination of whether a design application is eligible for registration to the absence of the substantive grounds for non-registrability referred to in Article 13.Article 30 - Deferment of publication
1. The applicant for a registered design may request, when filing the application, that the publication of the registered design be deferred for a period of 30 months from the date of filing the application or, if a priority is claimed, from the date of priority.2. When registered the design neither the representation of the design nor any file relating to the application shall be open to public inspection subject to provisions of national law safeguarding legitimate interests of third parties.
3. A mention of the deferment of the publication of the registered design shall be published.
4. At the expiry of the period of deferment, or at any earlier date on request by the right holder, the office shall open to public inspection all the entries in its register and the file relating to the application and shall publish the registered design.
Article 31 - Procedure for declaration of invalidity
1. Without prejudice to the right of the parties to appeal to the courts, Member States shall provide for an efficient and expeditious administrative procedure before their offices for the declaration of invalidity of a registered design right.2. The administrative procedure for invalidity shall provide that the design right is to be declared invalid at least on the following grounds:
(a) the design should not have been registered because it does not comply with the definition laid down in Article 2, point (3), or with the requirements provided for in Articles 3 to 8;
(b) the design should not have been registered because of the existence of a prior design within the meaning of Article 14(1), point (d).
3. The administrative procedure shall provide that at least the following persons are to be entitled to file an application for a declaration of invalidity:
(a) in the case of paragraph 2, point (a), the persons, groups or bodies referred to in Article 14(2);
(b) in the case of paragraph 2, point (b), the person referred to in Article 14(3).
Article 32 - Renewal
1. Registration of a design shall be renewed at the request of the holder of the design right or any person authorised to do so by law or by contract, provided that the renewal fees have been paid. Member States may provide that receipt of payment of the renewal fees is to be deemed to constitute such a request.2. The office shall inform the holder of the registered design right of the expiry of the registration at least six months before the said expiry. The office shall not be held liable if it fails to give such information and such failure shall not affect the expiry of the registration.
3. The request for renewal shall be submitted and the renewal fees shall be paid at least six months before the expiry of the registration. Failing that, the request may be submitted within a further period of six months immediately following the expiry of the registration or of the subsequent renewal thereof. The renewal fees and an additional fee shall be paid within that further period.
4. In the case of a multiple registration, where the renewal fees paid are insufficient to cover all the designs for which renewal is requested, registration shall be renewed if it is clear which designs the amount paid is intended to cover.
5. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be recorded in the register.
Article 33 - Communication with the office
Parties to the proceedings or, where appropriate, their representatives, shall designate an official address for all official communication with the office. Member States shall have the right to require that such an official address be situated in the European Economic Area.CHAPTER 4 - ADMINISTRATIVE COOPERATION
Article 34 - Cooperation in the area of design registration, administration and invalidity
The offices shall be free to cooperate effectively with each other and with the European Union Intellectual Property Office in order to promote convergence of practices and tools in relation to the examination, registration and invalidation of designs.Article 35 - Cooperation in other areas
The offices shall be free to cooperate effectively with each other and with the European Union Intellectual Property Office in all areas of their activities other than those referred to in Article 34 which are of relevance for the protection of designs in the Union.98/71/EC (adapted)
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CHAPTER - 5
FINAL PROVISIONS
Article 18 - Revision
Three years after the implementation date specified in Article 19, the Commission shall submit an analysis of the consequences of the provisions of this Directive for Community industry, in particular the industrial sectors which are most affected, particularly manufacturers of complex products and component parts, for consumers, for competition and for the functioning of the internal market. At the latest one year later the Commission shall propose to the European Parliament and the Council any changes to this Directive needed to complete the internal market in respect of component parts of complex products and any other changes which it considers necessary in light of its consultations with the parties most affected.Article 3619 - Implementation Transposition
1. Member States shall bring into force the laws, regulations or administrative provisions necessary to comply with Articles 2 and 3, Articles 6, 10 to 19, 21, 23 to 33 by …[OP please insert the date = 24 months after the date of entry into force of this Directive] at the latest. this Directive not later than 28 October 2001. They shall forthwith communicate the text of those measures to the Commission.When Member States adopt those measures these provisions, they shall contain a reference to this Directive or shall be accompanied by such a reference on the occasion of their official publication. They shall also include a statement that references in existing laws, regulations and administrative provisions to the Directive repealed by this Directive shall be construed as references to this Directive. The methods of making such reference shall be laid down by Member States shall determine how such reference is to be made and how that statement is to be formulated .
2. Member States shall communicate to the Commission the text of the main provisions of national law which they adopt in the field governed covered by this Directive.
Article 37 - Repeal
Directive 98/71/EC is repealed with effect from … [OP please insert the date = the day after the date in the first subparagraph of Article 36(1)], without prejudice to the obligations of the Member States relating to the time‑limit for the transposition into national law of the Directive set out in Annex I.References to the repealed Directive shall be construed as references to this Directive and shall be read in accordance with the correlation table in Annex II.
Article 3820 - Entry into force
This Directive shall enter into force on the 20th twentieth day following that of its publication in the Official Journal of the European Union Communities.Articles 4 and 5, Articles 7 to 9, Articles 20 and 22 shall apply from …[OP please insert the date = the day after the date in the first subparagraph of Article (1)].
Article 3921 - Addressees
This Directive is addressed to the Member States.