Considerations on COM(2022)666 - Amendment of Council Regulation (EC) No 6/2002 on Community designs - Main contents
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This page contains a limited version of this dossier in the EU Monitor.
| dossier | COM(2022)666 - Amendment of Council Regulation (EC) No 6/2002 on Community designs. |
|---|---|
| document | COM(2022)666  |
| date | November 28, 2022 |
(2) In line with its Communication on Better Regulation 27 and its commitment to review Union policies regularly, the Commission carried out an extensive evaluation of the design protection systems in the Union, involving a comprehensive economic and legal assessment, supported by a series of studies 28 .
(3) In its conclusions of 11 November 2020 on intellectual property policy and the revision of the industrial design system in the Union 29 , the Council called on the Commission to present proposals for the revision of Regulation (EC) No 6/2002 and Directive 98/71/EC. The purpose of that revision should be to modernise the protection systems relating to industrial designs in the Union and to make design protection more attractive for individual designers and businesses, especially small and medium-sized enterprises (SMEs).
(4) Since the establishment of the Community design system, experience has shown that individual designers and undertakings from within the Union and from third countries have accepted the system which has become a successful and viable complement or alternative to the protection of designs at the national level of the Member States.
(5) National design protection systems continue nevertheless to be necessary for those individual designers and undertakings that do not want protection of their designs at Union level, or that are unable to obtain Union-wide protection while national protection does not face any obstacles. It should be left to each person seeking design protection to decide whether the protection is sought only as a national design in one or more Member States, or only as an EU design, or both.
(6) While the Commission’s evaluation of the Union’s legislation on design protection confirmed that it is still largely fit for purpose, it announced in its communication ‘Making the most of the EU’s innovative potential – An intellectual property action plan to support the EU’s recovery and resilience’ 30 of 25 November 2020 that following the successful reform of the EU trade mark legislation, among others, it will revise the Union legislation on design protection with a view to improving the accessibility and affordability of design protection in the Union.
(7) In parallel with the improvements and amendments to the EU design system, national design laws and practices should be further harmonised and brought into line with the EU design system to the extent appropriate in order to create, as far as possible, equal conditions for the registration and protection of designs throughout the Union. This should be complemented by further efforts of the European Union Intellectual Property Office (EUIPO, ‘the Office’), the central industrial property offices of the Member States and the Benelux Office for Intellectual Property to promote convergence of practices and tools in the field of designs under the cooperation framework laid down in Article 152 of Regulation (EU) 2017/1001 of the European Parliament and of the Council 31 .
(8) It is necessary to update the terminology of Regulation (EC) No 6/2002 to conform with the Lisbon Treaty. This entails the replacement of ‘Community design’ by ‘European Union design’ (‘EU design’). In addition, the terminology needs to be aligned with that of Regulation (EU) 2017/1001. This involves in particular the replacement of the name ‘Office for Harmonization in the Internal Market (trade marks and designs)’ by ‘European Union Intellectual Property Office’.
(9) Since the establishment of the Community design system, the rise of information technology entailed the advent of new designs which are not embodied in physical products. That calls for a broadening of the definition of products eligible for design protection to clearly cover those visualised in a graphic, embodied in a physical object or apparent from the spatial arrangement of items intended to form, in particular, an interior environment. In this context, it should also be recognised that the movement, transition or animation of features can contribute to the visual appearance of designs, in particular for designs that are not embodied in a physical object.
(10) In order to ensure legal certainty, it is appropriate to clarify that protection is conferred upon the right holder for those design features of a product, in whole or in part, which are shown visibly in an application for a registered EU design and made available to the public by way of publication or consultation of the relevant file. While otherwise design features of a given product do not need to be visible at any particular time or in any particular situation of use in order to attract design protection, an exception should apply to the design protection of component parts of a complex product that need to remain visible during normal use of that product.
(11) The use of 3D printing technologies in different areas of industry is growing, which results in challenges for design right holders to effectively prevent illegitimate copying of their protected designs. Therefore, it is appropriate to provide that the creation, downloading, copying and making available of any medium or software recording the design for the purpose of reproducing a product that infringes the design, amounts to use of the design being subject to the right holder’s authorisation.
(12) In order to ensure design protection and combat counterfeiting effectively, and in line with international obligations of the Union under the framework of the World Trade Organisation (WTO), in particular Article V to the General Agreement on Tariffs and Trade (GATT), which provides for freedom of transit, and, as regards generic medicines, the Declaration on the TRIPS Agreement and Public Health, the holder of a registered EU design should be entitled to prevent third parties from bringing products, in the course of trade, into the Union without being released for free circulation there, where such products come from third countries and without authorisation incorporate a design which is identical or essentially identical to the registered EU design or where a design is applied to those products which is identical or essentially identical to the registered EU design.
(13) To that effect, it should be permissible for holders of registered EU designs to prevent entry of infringing products and their placement in all customs situations, also when such products are not intended to be placed on the market of the Union. In performing customs controls, the customs authorities should make use of the powers and procedures laid down in Regulation (EU) No 608/2013 of the European Parliament and the Council 32 , including at the request of the right holders. In particular, the customs authorities should carry out the relevant controls on the basis of risk analysis criteria.
(14) It is necessary to reconcile the need to ensure the effective enforcement of design rights with the necessity to avoid hampering the free flow of trade in legitimate products. Therefore, the entitlement of the holder of the registered EU design should lapse where, during proceedings before the European Union design court (‘EU design court’) competent to take a substantive decision on whether the EU design has been infringed, the declarant or the holder of the products is able to prove that the holder of the registered EU design is not entitled to prohibit the placing of the products on the market in the country of final destination.
(15) The exclusive rights conferred by a registered EU design should be subject to an appropriate set of limitations. Apart from private and non-commercial use and acts carried out for experimental purposes, permissible use should include acts of reproduction for the purpose of making citations or acts of teaching, referential use in the context of comparative advertising, and use for the purpose of comment, critique or parody, provided that those acts are compatible with fair trade practices and do not unduly prejudice the normal exploitation of the design. Use of a registered EU design by third parties for the purpose of artistic expression should be considered as being fair as long as it is in accordance with honest practices in industrial and commercial matters. Furthermore, the rules on the EU design should be applied in a way that ensures full respect of fundamental rights and freedoms, and in particular the freedom of expression.
(16) Directive (EU) [xxx] harmonises the laws of the Member States with regard to the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design is dependent. Accordingly, the current transitional repair clause contained in Regulation (EC) No 6/2002 should be converted into a permanent provision. As the intended effect of that provision is to make registered and unregistered Community design rights unenforceable where the design of the component part of a complex product is used for the purpose of the repair of a complex product so as to restore its original appearance, the repair clause should be placed among the available defences to EU design right infringement under Regulation (EC) No 6/2002. Furthermore, for the sake of coherence with the repair clause inserted into Directive (EU) [XXX], and in order to ensure that the scope of design protection is only restricted to prevent design right holders from actually being granted product monopolies, it is necessary to explicitly limit the application of the repair clause set out in Regulation (EC) No 6/2002 to component parts of a complex product upon whose appearance the protected design is dependent. In addition, in order to ensure that consumers are not mislead but are able to make an informed decision between competing products that can be used for the repair, it should also be made explicit in the law that the repair clause cannot be invoked by the manufacturer or the seller of a component part who have failed to duly inform consumers about the origin of the product to be used for the purpose of repair of the complex product.
(17) In order to facilitate the marketing of design protected products, in particular by SMEs and individual designers, and to increase awareness of the design registration regimes existing both at Union and national level, a commonly accepted notice consisting of the symbol (D) should be available for use by design right holders and others with their consent.
(18) In view of the insignificant number of EU design applications filed at the central industrial property offices of the Member States and the Benelux Office for Intellectual Property, and in order to align the system for EU design applications to the system set out in Regulation (EU) 2017/1001, it should henceforth only be possible to file an EU design application at the Office.
(19) Both technological advancement and the experience gained in the application of the current EU design registration system has revealed the need for improvement of certain aspects of procedure. Consequently, certain measures should be taken to update, simplify and speed up procedures where appropriate and to enhance legal certainty and predictability where required.
(20) To this end, it is of key importance to provide the appropriate means to allow a clear and precise representation for all designs, which is adaptable to the technical advance for the visualisation of designs and the needs of the Union industry. In order to ensure that the same graphic representation can be used for design applications in one or more Member States and for applications for registered EU designs, the Office, the central industrial property offices of the Member States and the Benelux Office for Intellectual Property should be required to cooperate with each other to establish common standards for the formal requirements that the representation must fulfil.
(21) For greater efficiency it is also appropriate to facilitate the filing of multiple applications for registered EU designs by allowing applicants to combine designs in one application without being subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class of the Locarno Classification 33 . However, a maximum limit should be provided for to avoid potential abuse of multiple filings.
(22) For reasons of efficiency and to streamline proceedings, the means of notifications and communications should be electronic only.
(23) In order to render the access to registered EU design protection more affordable and transparent, in particular for SMEs and individual designers that tend to file less designs compared to larger enterprises, it is appropriate to adjust the structure and amount of fees for the application of registered EU designs.
(24) Given the essential importance of the amounts of fees payable to the Office for the functioning of the EU design protection system and its complementary relationship as regards national design systems, and in order to align the legislative approach with Regulation (EU) 2017/1001, it is appropriate to set those fee amounts directly in Regulation (EC) No 6/2002 in the form of an annex. The amounts of the fees should be fixed at a level which ensures both that the revenue they produce is in principle sufficient for the budget of the Office to be balanced and that there is coexistence and complementarity between the EU design and the national design systems, also taking into account the size of the market covered by the EU design and the needs of SMEs.
(25) Regulation (EC) 6/2002 confers powers on the Commission to adopt rules implementing that Regulation. As a consequence of the entry into force of the Treaty, the powers conferred upon the Commission under Regulation (EC) No 6/2002 need to be aligned with Articles 290 and 291 of the Treaty on the Functioning of the European Union (‘TFEU’).
(26) In order to ensure an effective, efficient and expeditious examination and registration of EU design applications by the Office using procedures which are transparent, thorough, fair and equitable, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the details on the procedure for amending an application.
(27) In order to ensure that a registered EU design can be declared invalid in an effective and efficient way by means of a transparent, thorough, fair and equitable procedure, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the procedure for declaring a registered EU design invalid.
(28) In order to allow for an effective, efficient and complete review of decisions of the Office by the Boards of Appeal by means of a transparent, thorough, fair and equitable procedure, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the details of appeal proceedings where proceedings relating to EU designs require derogations from the provisions set out in delegated acts adopted pursuant to Article 73 of Regulation (EU) 2017/1001.
(29) In order to ensure a smooth, effective and efficient operation of the EU design system, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the requirements as to the details on oral proceedings and the detailed arrangements for taking of evidence, the detailed arrangements for notification, the means of communication and the forms to be used by the parties to proceedings, the rules governing the calculation and duration of time limits, the procedures for the revocation of a decision or for cancellation of an entry in the Register of EU designs, the detailed arrangements for the resumption of proceedings, and the details on representation before the Office.
(30) In order to ensure an effective and efficient organisation of the Boards of Appeal, the power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the details on the organisation of the Boards of Appeal where proceedings relating to EU designs require derogation from the delegated acts adopted pursuant to Article 168 of Regulation (EU) 2017/1001.
(31) It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making 34 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States' experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts.
(32) In order to ensure uniform conditions for the implementation of Regulation (EC) No 6/2002, implementing powers should be conferred on the Commission in respect of specifying the details concerning applications, requests, certificates, claims, regulations, notifications and any other document under the relevant procedural requirements established by Regulation (EC) No 6/2002 as well as in respect of maximum rates for costs essential to the proceedings and actually incurred, details concerning publications in the European Union Designs Bulletin and the Official Journal of the Office, the detailed arrangements for exchange of information between the Office and national authorities, detailed arrangements concerning translations of supporting documents in written proceedings, and exact types of decisions to be taken by a single member of the Invalidity Divisions. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council 35 .
(33) Given the advanced harmonisation of copyright law in the Union, it is appropriate to adjust the principle of cumulation of protection under Regulation (EC) No 6/2002 and under copyright law by allowing designs protected by EU design rights to be protected as copyright works, provided that the requirements of Union copyright law are met.
(34) Regulation (EC) No 6/2002 should therefore be amended accordingly and Regulation (EC) No 2246/2002 should be repealed.
(35) Since the objectives of this Regulation cannot be sufficiently achieved by the Member States but can rather, by reason of the autonomous nature of the EU design system being independent from national systems, be better achieved at Union level, the Union may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with the principle of proportionality as set out in that Article, this Regulation does not go beyond what is necessary in order to achieve those objectives.
(36) The European Data Protection Supervisor was consulted in accordance with Article 42(1) of Regulation (EU) 2018/1725 of the European Parliament and of the Council 36 and delivered an opinion on ....